The Game Lawyer Blog

How to check if something is trademarked

Trademarks are an extremely important part of any business’s intellectual property strategy. You may be wondering how to check if something is trademarked before using your own brand name. As part of your trademark game plan, a proper clearance search to avoid conflicts is one of the first steps to take.

What is a clearance search?

A trademark clearance search is a two-part process:

  1. you analyze your own proposed trademark, and
  2. you do a search to check if it is already trademarked (or otherwise in use)

This is a vital piece of the trademark puzzle. If you don’t go through this super important step before using the mark, you run the risk of infringing someone’s existing trademark.

If you infringe, you could be opening yourself up to receiving a cease and desist letter, getting sued for trademark infringement, and you could potentially be on the hook for a big damages award. You also waste a ton of time and money building up your new brand when there’s already a competitor using the name. This is a costly mistake that too many new businesses make.

How do you analyze a trademark?

Basically, you’re looking to make sure the trademark is distinctive, and not simply describing the goods or services. Distinctive trademarks fall into these three categories:

  1. Fanciful marks (Exxon)
  2. Arbitrary marks (Apple)
  3. Suggestive marks (Android)

Fanciful marks are unique, made-up names. These are the most distinctive, because they only exist to describe your goods and services. These are the strongest trademarks you can get.

Just as strong are arbitrary marks – trademarks that may use common words, but the words are completely arbitrary when compared to the goods and services at issue. Another example, besides Apple (which is a completely arbitrary name when compared to computers and phones), is Delta for faucets. These are very strong marks, and something you should shoot for.

Less strong, but still distinctive enough for protection, are suggestive marks. These don’t directly describe the goods and services, but they’re also not completely arbitrary. They require a “leap of imagination” to go from the trademark to the goods associated with that mark.

Stay away from trademarks that are descriptive and generic – those won’t give you any protection.

How to check if something is trademarked

The trademark search – how to check if something is trademarked already

Once you’ve got at least one strong and distinctive trademark picked out, many clients ask about the next step – how to check if something is trademarked by someone already. In the US, you would search the USPTO’s search engine to see if someone has already registered that mark. There is a bit of an art to this, as you need to make sure that you’re checking variations of your proposed trademark.

This means plural and singular forms, sound-alikes, misspellings, and even synonyms. If you miss any of these, you could end up having your trademark application refused because it is confusingly similar to others. Check out a recent guest post of mine on the Kickstarter Lessons blog that discusses this in more detail.

Other search engines to check include the EU’s trademark database, any industry-specific search engines, and a simple Google search.

Another important detail to keep in mind is that the same trademark can exist for two different products and services, as long as they are not too close. There are a number of factors that courts look at in analyzing whether the marks can coexist or not, but here are a few:

  1. How similar the trademarks are
  2. How close the goods are
  3. The different marketing channels used
  4. Whether there is evidence of actual confusion
  5. How strong the trademark is

Whether or not the trademark is too close is a subjective analysis, but it’s possible to make an approximate judgment. However, a trademark attorney is probably in a better position to make this judgment than someone who is doing this for the first time.

What if it is already trademarked?

If you do find a confusingly similar match out there, you have a few choices:

  1. Pick a new trademark
  2. Try registering your mark anyway and hope for the best
  3. Get a co-existence agreement or license in place with the existing trademark owner

The decision of what to do isn’t easy, and requires possibly taking on some business risk. I always recommend that you do so with the advice of an attorney.

Filing the trademark application

After you’ve determined if something is already trademarked or not, the next step is to file your trademark application. This seems simple, but there are so many potential pitfalls along the way.

For this reason, I recommend having an attorney file it on your behalf. For assistance with trademark registration and cost-effective flat fee services, contact a trademark lawyer for more info.

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California game lawyer focused on providing end-to-end legal protection and legal services for video game and board game developers, as well as software and mobile app developers.
California game lawyer focused on providing end-to-end legal protection and legal services for video game and board game developers, as well as software and mobile app developers.
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