Written by Gabrielle Carusello
The basic foundation of trademark law is formed by understanding the difference between a trademark and a service mark. According to the United States Patent and Trademark Office (USPTO), a trademark is a “word, phrase, and/or design that identifies and distinguishes the source of the goods of one party from those of others;” while a service mark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.”[1] In essence, a service mark includes logos and brand names, while a trademark can include any source of goods and services (and, the term “trademark” is often used to refer to both actual trademarks and service marks).
There is a difference between the date a trademark was first used anywhere and when a trademark was first used in commerce, and both dates are required to be specified in a trademark application made with the USPTO.[2] The date of first use anywhere is “the date the mark was first used anywhere on or in connection with the goods and/or services in the application or allegation of use” and the date of first use in commerce is “the date the mark was first used in commerce on or in connection with the goods and/or services in the application or allegation of use.”[3] The date of first use anywhere is “(1) when the goods were first sold or transported, or the services were first rendered under the mark; and (2) such use was bona fide and in the ordinary course of trade.”[4] The date of first use in commerce is “(1) when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress; and (2) such use was bona fide and in the ordinary course of trade.”[5] The USPTO requires that both of these dates are provided on the application even if the date of first use anywhere and the date of first use in commerce are the same.[6]
While it is true that not all trademarks must be registered, choosing not to register a trademark will leave the common law as the only avenue for an owner of an original mark to protect their trademark from potential infringement. Filing a trademark application with the USPTO is extremely important in order to protect a unique brand and the original mark of a business or a company. However, trademark clearance is not easily granted by the USPTO, and conducting a thorough search before filing an application is necessary in order to ensure that the mark is not already being used by another business or company in the market.[7] For example, trademark offices in different countries register marks without ensuring that their marks do not conflict with applications for existing marks that were received by other applicants prior to the more recent application that they approved.[8] Therefore, national database searches are important in order to establish the novelty of the mark before exporting the goods or services to other countries.[9]
Further, if you infringe on the rights of any other third party by using a mark that has already been registered and you failed to conduct a proper search, a court may find that you should have done your due diligence in researching the potential existence of a mark similar to yours (or else the business could get heavily fined!).[10] Consequently, if your mark is found to be too similar to the mark of an already-registered trademark, you will have to alter your mark after it has already been promoted, manufactured, and developed, which is a waste of time, money and energy.[11]
In order to decide whether a trademark is “confusingly similar” to an already-registered trademark, the USPTO will evaluate if the marks are similar in sound, appearance, and meaning.[12] For example, even if the marks themselves are not exactly the same, but if they are identical phonetically, the mark may be denied.[13] If the only differences between marks are minor details in the mark’s design or style, then the mark may be denied.[14] If the marks have identical meaning, however the only difference between marks is a modification made by translating the mark into another language, the mark may be denied.[15] However, even if the two marks are found to be “confusingly similar,” the likelihood of confusion is relevant only if the goods/services associated with the two marks are related (i.e. the two businesses who own the marks are in the same target market or produce similar products).[16]
If a conflict does exist between the applicant’s mark and a mark that they found in their trademark search, the attorney will likely notify the applicant of the potential conflict.[17] Because of the above-listed reasons, trademark searches are especially important—not only to protect your original mark, but to ensure that you are not subject to a lawsuit or egregious fines because the mark you are planning on using (or are already using) is currently in use by a registered trademark owner.
[1] United States Patent and Trademark Office, Trademark, Patent, or Copyright?, Trademarks: Getting Started, Dec. 13, 2011, https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright.
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] World Intellectual Property Organization, Conducting Trademark Searches, IP for Business: Marks, N.D., https://www.wipo.int/sme/en/ip_business/marks/tm_search.htm.
[8] Id.
[9] Id.
[10] Jayaram Law Grp. Ltd., The Importance of Running a Trademark Search, N.D., http://www.jayaramlaw.com/2017/01/23/importance-running-trademark-search/.
[11] Id.
[12] United States Patent and Trademark Office, Possible Grounds for Refusal of a Trademark, Trademarks: Getting Started, Apr. 20, 2010, https://www.uspto.gov/trademark/additional-guidance-and-resources/possible-grounds-refusal-mark.
[13] Id.
[14] Id.
[15] Id.
[16] Id.
[17] Id.
