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Identifying Potential Problems With Trademark

The two most common (and avoidable) reasons a trademark application can run into problems are:

  • Your trademark search is likely to cause confusion (it is not available)
  • Your trademark search is merely descriptive (it is not strong)

Likelihood of Confusion (Availability)

Before you can obtain rights to enforce or defend a trademark search, the mark must first be obtainable. The USPTO (and we lawyers) determine the availability of a mark by assessing the “likelihood of confusion” between your new trademark search and that of any pre-existing trademarks. For example, a new Italian restaurant called “Olive’s Garden” is likely to cause consumer confusion with the existing restaurant “Olive Garden” and would probably be denied federal registration by the USPTO.

We highly recommend using the services of experienced attorneys such as those at the Trademark Law Firm because determining likelihood of  confusion can be very subjective and require substantial legal experience and training to accurately predict. For example, “Apple” is a strong mark for a company that primarily sells consumer electronic goods. If you were to create a company called “@pple” to sell any kind of electronic goods we would advise you that the name “@pple” is “phonetically equivalent” to the name “Apple” and has the same relatedness of goods, resulting in a likelihood of confusion. If, however, your company sold paper products under the name @apple the likelihood of confusion with the “Apple” selling electronic goods would be low and your registration chances very high.

Perhaps the highest benefit in performing a trademark search prior to applying to register your own trademark is to identify and avoid any likelihood of confusion such as the instances above.

Descriptiveness (Strength)

The purpose of your trademark search is to help you distinguish your brand from that of your competitors. The stronger the distinctions between your brands, the stronger the trademark. Therefore, the USPTO considers trademarks that are “merely descriptive” as weak but favors trademarks that are “arbitrary” or “fanciful” as strong. For example, a deli shop under the name “deli shoppe” is merely descriptive of the products sold and not likely to succeed in a trademark application whereas the same shop under the arbitrary name “pickles” would not likely encounter serious obstacles with the USPTO.

If your application has strong parts and weak parts (e.g., “pickles deli shoppe”) the USPTO may allow your trademark search to register so long as you disclaim (or claim no right to) the weak element of your trademark search.

An experienced researcher can actually search disclaimed trademark terms to anticipate any likelihood that part or all of your application will be considered weak by a USPTO examiner, enabling you to more cost-effectively file your application.

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