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Trademark Search In Hand “Noodle” over it!
© Cheryl Hodgson 2009 | Posted on March 15, 2009
N=NOODLE
(Think about it!)
Code: HIP = “Have Intellectual Property”
A trademark search provides a valuable road map. Search in hand (or inbox), it’s time to wade through dozens of references to see if your chosen term is a worthy of an investment. Investment includes not only marketing dollars, but legal costs of registration, together with future costs of maintaining and enforcing rights.
Think of your trademark search as a chance to “kicks the tires” of a new car, or obtain a “termite report” before closing on a new home purchase. Better to know both the problems and benefits are prior to making a long term commitment.
A few of the important pointers:
1. Analyze not only Federal registrations and applications but also State references in across the country, as well as domains .
There is a lot of confusion as to the interplay between domains and trademarks. A domain name is an address or location. It may or may not be a trademark, or serve as a barrier, depending up whether it is a descriptive search term or contains a distinctive term.
HIP Tip: Internet marketers love descriptive search terms. They may be good for search engine purposes, but they are terrible for building brand value and increasing the long term value of your intellectual property.
Example: <www.buttons.com> for a site selling buttons is descriptive and not protectable. <www.ebay.com> is a distinctive brand in addition to being a location on the internet. Ideally you want both!
2. Is the same mark in use for the same or similar goods and services?
HIP Tip: Variations in spelling are not enough to be considered a different mark.
I have often been asked, “But what if I change the spelling?” Sorry, not enough .
3. Look for companies in related, but not directly competitive goods and services which might block expansion of your product line.
Example: Orange Juice and Vodka are related goods. The name for one can preempt the other if challenged. Same goes for peanut butter and jelly!
4. Does all or a portion of your proposed brand contain a term that is “in fashion” and being over used?
HIP Tip: If the search shows a number of applications filed or registrations containing the proposed mark, even if for different goods and services, this is a flag. It often serves as a sign the term will be difficult to protect, and then it will very narrowly protected.
On the other hand, if there are few users of the term, you have likely found that valuable real estate called an “inherently distinctive” mark, one that can be used without getting sued, and which you can use to prevent unwelcome intruders into your market.
Example: The word “metrosexual” become an instant hit and used worldwide to describe certain traits of a man. We were INUNDATED with requests to file trademarks using that term. If everyone already wants to use a specific term, you know that it will not be easy to protect or develop into a great brand.
5 Does your mark contain a pre fix or suffixes in common use within an industry? If so, this can make it hard for your chosen brand to “stand out in a crowd.”
HIP Tip: The more competitors who use a pre fix or suffix, the weaker the mark.
Example: The ending “in” for any product containing an aspirin ingredient has been held to be generic and hence not a legally protectable element of a mark.
Time spent with counsel analyzing search results can provide a way to side step potential land mines, and illuminate the dark path to wise selection and protection.
Next: Step 3: “Selection” – BRAND BULLSEYE-
Hit the Target before You Register!
Technorati Tags: brand equity, brand management, brand protection, Branding, Intellectual Property, loss of rights, Marketing, trademark registration, Trademarks, women entrepreneurs
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