Brands are often the most valuable assets that companies own, driving demand and building relationships with customers and partners. Check out the eye-popping values of the world's top 10 brands as calculated by leading brand valuation consultancy Brand Finance:
Given the dollars involved, companies vigilantly protect their brands with trademarks for words or designs that are unique to their business - including logos, company names, tag lines, product packaging, sounds and even smells. This creates a potentially devastating trap for the unwary. Take, for example, the case of Dallas-based yogurt shop Monster Yogurt.
Monster Yogurt filed a federal trademark application for this logo:
The application was approved for publication by the United States Patent and Trademark Office (USPTO). Upon publication, any party who believes it would be harmed by registration of the trademark has 30 days to file an opposition (or to request an extension of time to file an opposition).
The trademark application caught the attention of energy drink behemoth, Monster Energy Company. Monster Energy filed an opposition to the trademark application based on its pre-existing MONSTER trademark registrations. For Monster Yogurt, this meant getting dragged into an expensive and distracting legal proceeding. With the odds weighing against them, Monster Yogurt agreed to a settlement pursuant to which it was required to abandon its trademark application.
To avoid the same fate as Monster Yogurt, it's critical to do a trademark search to identify potential conflicts with pre-existing trademarks owned by someone else. The first thing you should do is run a free trademark search on the USPTO database. This will help you identify any obvious conflicts.
Even if the free search does not disclose any obvious conflicts, there still might be obstacles to the use of the trademark. The USPTO database contains millions of records, and you will need to make some judgment calls in developing a search strategy. This will result in a margin for error - especially when it comes to consumer brand names since they do not always follow established rules of spelling, grammar, construction, punctuation or meaning. There are similar limitations with a Google search.
Federal database searches are also limited to pending and registered federal trademarks. Unregistered trademarks could affect your ability to register your trademark.
For these reasons, free searches are only used to eliminate trademarks that are clearly unavailable. To know whether a trademark is available for registration, you should hire a lawyer to do a professional trademark search for any confusingly similar pending and registered federal trademarks. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. If confusion is likely, then you should not use the trademark.
Want to know more about trademark searches? You can sign up for a free trademark assessment to learn the availability of your trademark for registration. You can also schedule a free attorney consultation on our home page.
Author's Note: This post was originally published in May 2015 and has been updated for freshness, accuracy, and comprehensiveness.