Intellectual Property: Trademarks and Service Marks - Part 2

You finally came up with the perfect name and/or logo for your brand but can you use it? Did you check to see if someone already trademarked your brilliant idea?
​
Even if your exact idea is available, have you checked to see if it is similar to someone else's trademark. You can't use your mark if there is a "likelihood of confusion".

What is likelihood of confusion?  

Essentially, likelihood of confusion exists when (1) the marks of the parties are similar and (2) the goods and services associated with the marks are related in such a way that people are likely to believe they are from the same source. 

To determine if your new name or logo is confusing, you have to look to see if  the mark looks like, sounds like, has a similar meaning, or creates a similar overall commercial impression to the registered mark. 

For example, if your name is "The Mane Tamer" for natural hair products and someone else has registered "The Main Tamer" for chemical perms then you should probably pick another name.

Why? Because these names look alike, sound alike when spoken, and arguably have similar meanings. Which means the first element in the likelihood of confusion test has been met. The second element deals with the goods and services being sold. Since the names are for related products, remember the goods or services don't have to be identical to be confusing, then the name you chose "The Mane Tamer" is probably going to fail the second element likelihood of confusion test too. As such, your application for a trademark will be rejected by the United States Trademark and Patent Office ("USPTO"). Even if the USPTO did not find a conflict during their initial review, the owner of "The Main Tamer" would oppose and contest your mark and cause your application for the trademark "The Mane Tamer" to be rejected.

If your name "The Mane Tamer" was in reference to horse grooming, then the likelihood of confusion would be significantly reduced and you would stand a better chance of being able to register your mark.

You're a problem solver and you want to keep your name, so perhaps you are thinking you can just use the name without registering it. Wrong! Even if you don't file for a trademark, if you use the name on your natural hair products, the owner of "The Main Tamer" trademark could sue you for trademark infringement. 

In order to avoid all of these unpleasantries, when you are selecting a trademark for your business, be careful not to select one that causes a likelihood of confusion with another trademark. How do you do that? By performing a search for similar marks that are used on related goods and services before adopting your trademark.  This is called a "clearance search" and involves searching federal and state trademark registration databases.  It also involves a search for unregistered common law trademarks by searching the Internet for similar marks being used for goods and services related to yours. If you don't know how to perform a clearance search a trademark lawyer can assist you. It is much easier and cheaper to do the search before you waste resources building a brand only to later find out you can't use it and have to spend even more resources rebranding.

---