Should you do a trademark search before you start using a new brand or before you file a trademark application?
It’s a sensible question but I have found that sometimes clients do a search and they think that they’re safe when they’re actually not. A search is a good place to start, but it’s important to understand that sometimes the search doesn’t always reveal all of the relevant trademarks. So let me give you an example, my client wanted to use the name Monkey Bars, he searched for the name and didn’t find anything. What had actually happened was he searched for MonkeyBars as one word and somebody else had Monkey Bar, two words. Because the services were similar, he had a problem.
Now, he didn’t think that they were that similar because he knew that the other trademark was owned by a radio station. He thought this radio station doesn’t give business advice, I’m a business adviser, so even if the trademark is there, I’m still fine because they’re a radio and I’m not. but it doesn’t kind of work that way, what you need to look at, if you do a trademark search is you need to make sure you search for each element of the trademark. In his case, he would have needed to look for Monkey Bars, Bars, maybe even Monkeys, or even something that sounds like monkey, like Funky Bar. Or maybe something that’s got a similar meaning, like Chimpanzee Bar. In the world of trademarks, it’s not only the identical trademark that’s gonna stop you, it’s things with similar ideas, things with similar looks and similar sounds.
So if you’ve done a search and if you find something, you think maybe relevant to your potential trademark, what does that mean for you? If you’ve found something that is pretty similar to what you want to use, and the services or goods listed in that trademark are pretty similar to what you want to do, then that is probably a potential problem. At that point, you could ask a patent attorney or a trademark attorney about it, or you could just change your brand because if your trademark is too similar to what’s already registered and you use your brand, you could be infringing a registered trademark. Which means you could be sued for any profits and you might have to pay legal fees as well.
The other consideration when you do a search is just because nobody else has got the trademark registered doesn’t mean that you can register it yourself. There might be a very good reason why they haven’t got it registered, one of those reasons could be that it’s just simply too descriptive, too common or too generic in your industry. So I couldn’t get the word laptop registered for computers, obviously because it’s a common description of laptops. People often will put together descriptive words like incredibly wonderful hot yoga and then want to register that but again, it’s just descriptive and they might not be able to get it through.
So just because nobody else has got incredibly hot wonderful yoga, doesn’t mean it’s available for you to register as a trademark. So in summary, searches are good, but they do not give you the entire answer. As long as you’re aware of that, go ahead because it is a good idea to get a search done but remember, if you want to extend your trademark use overseas, then you need to consider doing your search on overseas registers, as well as local registers. My name is Cathryn Warburton and I am the Legal Lioness.