Trademark Registration: Search Before You Sell

As a trademark attorney, I get a lot of calls from clients who are interested in securing their trademark rights to a particular name they have chosen for their goods or services. I explain to them that the first step in the trademark registration process is to conduct a comprehensive trademark search for the name they have chosen in order to make sure that the name, or a similar version of the name, has not already been trademarked by others.

At this point, some clients balk at me, telling me that their name is unique, and that they are quite sure that no one else in the world is using that particular name. However, just because no else is using the same name does not mean that the proposed trademark is available for use and registration. In fact, the test for trademark infringement is not "identical" use of another's trademark, but rather "confusingly similar" use of another's trademark. Therefore, although the terms "ALLIGATOR" and "CROCODILE" are completely different words in terms of sound and spelling, they present very similar commercial impressions, such that they could be "confusingly similar" in meaning when used on similar goods or services in the same industry. For example, ALLIGATOR COSMETICS could be held to be confusingly similar to CROCODILE COSMETICS if both companies provided cosmetic products.

In order to avoid any headaches and further expenses in the future, a business should always have a comprehensive trademark search conducted by competent trademark counsel before proceeding to use the name in commerce, no matter how sure the business owner is that "no one else is using the name."

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com