Trademark Searches Done Right

“Can I use this trademark? I already did a search and didn’t find anything.”

I hear this all the time. My answer is more questions. Did you search for:

You can’t know if a trademark is safe until you’ve done all those searches.

Let’s look at an example of a search done properly.

Pretend you want to use SEIZE THE DULCE for a candy store.[3]  You’d probably search for SEIZE and DULCE together as part of a trademark, like this:

Screen Shot 2018-07-10 at 12.28.15 PM.png

No hits. Good to go?

Not so fast!

To do a proper search, you also have to search for: homophones of SEIZE, truncated form of DULC_; and translations of DULCE:

Screen Shot 2018-07-10 at 12.28.29 PM.png

That’s a lot of hits. You can review them all or narrow the search using descriptive words for your goods and similar goods:

Screen Shot 2018-07-10 at 12.29.03 PM.png

That let’s you find the rather famous SEE’S CANDIES®.

Now you have to apply the du Pont factors and other trademark law principles. Based on my experience, I’d conclude that SEE’S CANDIES is very likely to bar your using or registering SEIZE THE DULCE because SEE’S CANDIES is a famous trademark entitled to very broad protection.

I’d report that to you like this:Screen Shot 2018-07-10 at 12.20.31 PM.png

Now that’s a trademark search done right. It’s a bummer to have to pick a different trademark but not bad as getting a cease and desist letter from the owner of SEE’S CANDIES a year after your launch.

 

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[1] “Truncate” is cutting off the endings of words to get down to the root: If you truncate “frame” you get “fram”. That lets you catch “frame” “framed” “framing” “framer” “frames” and “framers”.

[2] Homophones are words that sound the same, but have different meanings and spellings, like NEW, KNEW, NU, and GNU.

[3] It should really be SEIZE THE DULCI but that ruins the already awful pun.

[4] An asterisk is a wild card in some trademark database searches.

[5] A dollar sign is a different kind of wild card in some trademark database searches.

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