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Norton Law Corporation Trademark Attorney Trademark Available

How to Find Out if a Trademark is Available

One of the most common questions I’m asked about trademarks is how to find out if a trademark is available. Unfortunately, it’s a question I’m often asked too late in the process and not before my clients begin using their marks with their brands. Usually the client is already using the mark and they’re just now going to register it. But every so often, I’ll get a call from an enlightened client (who must have been reading one of my blog posts) about trademark availability before they actually start using the mark.

So the process for determining whether a trademark is available is a fairly straightforward one. All you need is a trademark search or two. Simple enough, right?

Not so fast. Trademark searches can be tedious. If you’ve never seen the interface for the United States Patent and Trademark Office’s (USPTO) trademark search, known as TESS, you should take a look and then come back here. It’s nothing like Google and daunting is a good word to describe it. Issues with design and functionality aside, TESS is a good starting point for people looking to see if their trademarks are available for use.

Let’s do an example search for something interesting. Say you’re interested in wristwatches and you want to develop your own brand. You’re about to launch a new Kickstarter campaign to help you crowdfund your venture, which you’re going to call OhhMega, but before you do you realize you’d better see if any other watch makers are currently using the same mark as you. So you start with a Google search to determine if anyone’s already using that word. Nope, just some kid on Twitter who hasn’t posted for about four years now. Then, because you’ve read other posts on the importance of trademark searching, you head over to TESS to do a quick search for an exact match of your brand’s name. We trademark attorneys call these kinds of exact match searches “knockout searches.”

You don’t have a logo yet, so you select the option for a Basic Word Mark Search for new users since you don’t know anything about how to use operators in the search or anything like that. You just want to find out if OhhMega is currently registered. A few keystrokes later, and you see that TESS returned no results. Not surprising since OhhMega is a really weird way to spell omega. Congratulations, your very basic search is complete.

But as any good watch enthusiast knows, there is a watch brand out there called Omega. They’re very famous, have some impeccable designs, and have been around in one form or another for about a century—but I digress. In fact, they have a rather old trademark, Registration Number 0025036, dating back to 1894, along with a slew of other marks registered for their specific models and changes to the look of their logo. As you can see from our example above, your knockout search would not have been able to discover even such a well known, famous mark. And that’s why you need more than just a knockout search to determine if your trademark is available.

Now, as a trademark attorney, I’m apt to tell you to that you really need to hire a trademark professional to conduct this search for you. And even if I wasn’t a trademark attorney, I would still tell you the same thing. The truth is that trademark searches are incredibly important, and can mean the difference not just between getting your trademark registered or not, but the difference between finding yourself faced with a demand letter to rebrand your business or face a very costly trademark infringement suit. That’s why a proper trademark search to determine the availability of your mark includes not just a knockout search through TESS, but a full-on trademark search through TESS, a search through the state trademark databases, a search through the World Intellectual Property Organization’s database of international trademarks, and a search through common law trademarks (those trademarks that are used by local businesses, online or whatnot, but are not registered with any governmental organizations—and yes, they may still have rights even though they never bothered to register their marks). And for all of those searches, you’ll need to conduct it using other phonetically similar searches, which, in the case of the OhhMega watch company, would mean searching for Omega since they sound the same even though they’re spelled differently.

So as you can see from our little example, a knockout search is not enough. A quick googling (yes, I’m helping to perpetuate genericide on Google’s trademark) is not enough. A comprehensive clearance search is what you need if you’re serious about your brand and you want to make sure your trademark is available before you begin using it. Ultimately, the few hundred dollars you spend now on a trademark search conducted by a professional is well worth it when compared to the possibility of facing hundreds of thousands of dollars in liability for trademark infringement or tens of thousands to millions of dollars in rebranding.

However, one thing a trademark search cannot tell you is whether you should go ahead and register your trademark if there is a problem with the search. Maybe the search came up with a result that’s very similar to yours but is currently being used in a completely different market. For example, you’re selling telephones and the current user is making mattresses. Or maybe the search found something that looks like it’s not being used but is still a live mark with the USPTO. When these kinds of issues arise, it’s time to sit down for a nice chat with your trademark attorney for a discussion on how to proceed, as the answer to whether you’ll be able to register your trademark at that point will depend on a mix of sound legal advice and savvy business judgment.

2 Steps to a Trademarkable App Name: The Legal Side of iOS App Development Part II

Choosing the right name for your iOS app is always a difficult task. After all, you’re looking for something that sounds great, is memorable, is not already in use, and has some relation to what your app actually does. Finding the right mix between all of those factors is a tough job, but we have a few tips to help point you in the right direction.

Before we get into them, though, be sure to check out our post on How To Pick The Perfect Name For Your Business. You may find a number of helpful hints that can easily be applied to naming your app.

There are really three goals you should have in mind when choosing your app’s name: (1) Choose something that somewhat describes what your app is or does, (2) Choose something you can trademark, and (3) Choose something that is catchy or marketable.

Since our posts try to stick with the legal side of things, we’ll be talking about trademarkability. I’ve discussed trademarks a bit on our site before, but as a refresher, there are a couple of things you need to know. The biggest, when it comes to choosing a name, is to make that name as distinctive as possible. Whether you’re able to register a trademark for the app’s name at some point in the future largely depends on how distinctive your mark is. If you’re naming your new messaging app Message App, that’s not particularly distinctive—it’s merely descriptive and therefore somewhat unlikely to be registered by the United States Patent and Trademark Office (USPTO). However, if you name your messaging app something like Fast Messages, you’re getting somewhere. You have a name that is a little more distinctive than before. However, if you really want to take it to the next level, then take a page from messaging app names like WhatsApp or KakaoTalk, both of which have very distinct names.

The next issue you need to be on the lookout for when coming up with a name for your iOS app is to make sure you’re not (inadvertently) taking a page from an existing trademark. In other words, if your mark is too similar to a currently registered mark, you’re going to have a tough time registering your app’s name with the USPTO. Before any trademark can be registered, it has to be cleared through the USPTO’s strict set of searches, and if any problems pop up, it will delay the process. Furthermore, even after your application has cleared the USPTO examining attorney’s first search, the mark goes on to be published in the Trademark Official Gazette, a weekly publication from the USPTO that documents the marks that are approved for registration each week. Once published, you have to wait to make sure nobody opposes your mark before the USPTO will finally register your trademark. Long process, right? It takes at least 6-7 months.

Ultimately, I always recommend approaching naming an app (or a business) as a two step process. Start by coming up with 3-5 names you think sound great. Then start searching around to make sure those names aren’t already in use. Of course, if you hire a trademark attorney to help you through the process, we’ll do all of the searching for you.

Keep an eye out for our next post on the legal side of iOS app development, where we talk about forming your business in a way that’s great for you—and will make your future investors happy too.

Photo Courtesy: Thomas Leuthard

I’ve Just Received a USPTO Office Action! What Should I Do?

An Office action can be a scary thing for a would-be trademark owner. You think the registration process is going along fine when all of a sudden, you get this letter from the USPTO, the United States Patent and Trademark Office. Inside, much to your dismay, is not a registration certificate for your trademark, but a letter detailing exactly why the USPTO has refused to register your mark.

Before we get into any information about Office actions, a few words about this post. This is designed as an incredibly basic overview of what a USPTO Office action is, what you should do if you receive one, and the deadline for response. The details of the two types of Office actions—procedural and technical—are reserved for another post, as are what you should do if the USPTO’s examining attorney denies your application even after you feel you’ve responded to the Office action with sufficiency. Here, we’re just going over the very basics of an Office action and what you need to do about it in very general terms.

So what exactly is a USPTO Office action? Well, it is essentially a letter that outlines the procedural or technical shortcomings that have prevented the USPTO from continuing with the registration process for you trademark. These can happen to anyone, regardless of whether you have hired a trademark attorney to help you with the registration process, or whether you’ve decided to go it alone and submit the application yourself. Sometimes, the deficiency in the application can be so minor that the examining attorney at the USPTO may just call you (or your attorney) to see if they can fix the problem over the phone. However, any type of major shortcoming in the application will warrant the USPTO actually sending you a letter Office action.

Now, if you receive an Office action, you need to keep in mind that you’re suddenly put on a very strict schedule for response. As with everything else with the USPTO, dates are of the utmost importance—first use in commerce, renewals, and of course, Office action response dates. As a result, you need to keep in mind that you have six months to respond to an Office action. If you take longer than the six month window to respond, your application will be deemed abandoned and you’ll have to start all over with the registration process—fees and all. While there is a two month grace period beyond the six month window, you really need to make sure you make it within the six month deadline, as that should be plenty of time to respond.

After you receive an Office action in the mail, and you’ve read this post, the only question that remains is whether you should try to respond to the USPTO Office action on your own, or enlist the help of a trademark attorney.

Image Courtesy: anieto2k