NOTE: This article is provided for General Information ONLY. You should consult a TRADEMARK attorney for legal advice. NAMEPERFECTION does not warrant names as to trademark or provide any guarantees as to their suitability for trademarks. You should consult a trademark attorney for specific advice. Ask about a reservation period if you need to have an in depth search conducted.
Trademarks are established by use not registration. If you stop using it then you’ll lose it. The laws surrounding trademark derive from common law (English Law created by judges) unfair competition laws. This creates a confusing hodgepodge of rules that don’t lend themselves to clear answers.
What kind of geographical range does a trademark have?
Trademarks are granted by country. Many countries, but not the United States, have joined a system called the Madrid Protocol.
What kind of search should I perform to check to see if there might be a trademark issue?
Because trademarks are established by use, checking to see if there are any issues involves a time and expense tradeoff.
The first search is just Google. Run the name through Google and see what comes up. It’s free and Google is in some ways more comprehensive than the United States Patent and Trademark office system or Trademarkia. Since trademarks are established by use and you are purchasing a domain name then you will be especially interested in other online uses, even if it’s as a product name that a company might not have bothered to trademark.
If that’s clear then I would check both the USPTO Tess system and Trademarkia. You are looking mainly for live entries; however, dead entries can still interfere potentially since they might still be operational just not completing filings or just limping along.
If you are investing a serious budget in your startup then you should consider a professional search and opinion letter. More expensive options will include searches of state trademark offices and business directories.
Note no search will be 100% effective. There might be a Vibito Eatery fruit stand that’s an unincorporated sole proprietor with no social media presence or business license. You could establish a great Vibito Fruit Company that spreads over the nation selling low sugar fruit spreads, but the Vibito Eatery would still be able to operate in their original area since they are a preexisting use.
On my site I own all the domains so if you want me to hold off for up to 5 days on pushing the domain so you can have a professional search run that won’t be a problem. If you find an issue I can just process a refund. If you purchase a domain somewhere else, try to either get a commitment to hold an offer for long enough to have a search done or see if they’ll sell you a five day option for a nominal amount. A trademark search can usually be completed in 1-3 days.
If someone has a trademark on the name can I use it?
We tend to think of trademarks like patents, the first to file gets it. However, thinking about even some real world examples you can see this isn’t true. There’s a Delta Airlines, Delta Faucets, and several Delta Banks. The companies do not have any corporate connections.
You can use the same name if it wouldn’t cause a “substantial likelihood of confusion”. Note that while you need to register a trademark for all the classes where you want the benefit of registration, having a different class does not create a safe harbor for substantial likelihood of confusion. United States courts will generally use a test called the Polaroid test from a 1961 case. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)
There are numerous factors such as likelihood of confusion, actual confusion, sophistication of consumers, intent and several others.
I would suggest a consultation with a trademark attorney before you start to use a name that might cause confusion if you even get an inkling in the common sense portion of your brain that there might be a problem.
Generic – Term may be used synonymously Misspellings are still generic,
Descriptive – Describes a quality of a good. Requires a strong showing of secondary meaning.
Suggestive – between fanciful and descriptive Citibank eamples somewhat of a middle ground. Requires use of imagination
Foreign words read as though they were English. So Pain is still Bread, even though it is French.