Want a Trademark? Make Sure It Doesn’t Already Exist

Want a Trademark? Make Sure It Doesn’t Already Exist by Pat Werschulz

{Read in 4:40 minutes} So often I am asked, “How do I get a trademark?” There’s a very simple answer.

First, you pick what you want as your trademark, and second, use it.

Wait a minute. That sounds way too simple. Well, getting rights in a trademark is actually pretty simple. The tough part is actually picking what your trademark is going to be. Whether it’s a name, or what we call a word mark, or design, picking that is very critical. You need to be sure that you can actually use it and that you will not be using somebody else’s trademark.

The first thing to do is a search to make sure that nobody else is using it in association with the product or service that you are providing. It’s not as simple as it sounds. Of course, you can search online with various search engines, such as Google or Yahoo! or Bing. You can also search the Trademark Electronic Search System to see if somebody else is using your proposed brand name or logo.

Logos are a particularly hard search, and brand names are tricky. You first have to know what you’re doing business in. There are 45 international classes: 34 for goods and 11 for services. Whatever you’re doing, whatever you’re selling, whether it’s a service or goods, is going to fall into one or more of those classes.

The idea is that you cannot use a trademark that is being used by someone else in the same class as you are. That’s kind of tough, because lots of times these classes are very, very broad. You may think what you’re selling is different, but if it has the same class number, the Trademark Office is going to look at it as being the same. And that’s also true of the courts, whether you are working in one state and have the state trademark, have something that’s very local, or are going for federal registration.

So the first thing is picking a brand, a trademark. It is very important to consult with a trademark attorney, because they know how to search and where to search, or else they hire a professional search organization that comes back with a report, and they can give you an opinion.

Lots of times, people forget that there are many ways to spell a word. There’s a right way, as it is in the dictionary, but there’s also so many variations—swapping that K for a C, swapping a PH for an F, and so on. They think they have something different because their spelling is different, but if it sounds the same, in trademark law, it is the same.

So, you have to look at not just how you are proposing to spell your trademark, but how other people may have a variation on it. I’ve had multiple clients come to me in trouble because they weren’t aware of this rule. We call it the radio test. If somebody is listening to the radio and heard your brand name, and heard the brand name of somebody else, are they likely to confuse the two because they sound the same? If it sounds the same on the radio, it’s going to be opposing your mark.

So that’s the most critical first step: finding out whether the name you want to use is available. The second step is pretty easy, and that’s to use the mark you’ve created. I’ll go into more detail in my next entry.

Contact me with questions or comments today.

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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