Searching for the Elusive Nothing: The Dangers of DIY Trademark Searches
My phone rang and I picked it up. It was a potential client interested in inquiring about our trademark services. The call went something like this:
Caller: Hi. My name is D.I. Why. I was wondering what you charge for filling out the forms to file a trademark registration with the U.S. Trademark Office.
Me: Well, Mr. Why, we do offer a flat rate for trademark filings. But I am sure you will want us to do a trademark search. Otherwise, you can wind up paying our fees and the trademark filing fees, but we will not have the information we need to assess your chances of obtaining the registration.
Caller: No, no – I already did the search. The mark is clear. I don’t need a search.
Me: Oh! Well, that’s great. But if you don’t mind, how did you search the mark?
Caller: It was easy. I went to the Trademark Office’s website and I used their search engine to search for the mark I want to register. I put it into their basic search engine; found no matching records.
Me: Got it. You put in the exact term you wanted to register, and it came back with nothing. Just out of curiosity, what’s the trademark term?
Caller: It’s ACME … but it is spelled AHCKMEE. So that’s what I searched and – done! I can’t believe you guys charge to do this. It took me 5 minutes! So how much to file it?
This a mildly exaggerated version of a conversation that occurs all the time between trademark attorneys and some clients. The “disconnect” here is that an applied-for mark will be refused registration if it is “likely to be confused” with an already-registered mark, and it will likely be suspended if there is a previously filed application that has not yet been registered. Trademark lawyers refer to this as a “2(d) Refusal” (referring to §2(d) of the Trademark Act).
Inexperienced applicants who attempt their own trademark searches do not always realize that, fundamentally, a trademark search is a search for “nothing” but that searching for nothing requires skill. By that, I mean that when you are searching the trademark registry, you’re hoping that you find nothing because if there’s nothing, then the trademark is “clear.” When searching, it is tempting to embrace results that say “nothing.” But experienced trademark attorneys know that “nothing” is actually pretty elusive.
When 2(d) Refusal issues emerge, experienced trademark attorneys understand that the Examining Attorney will apply a multi-factor test to the applied-for mark. There can be up to 13 different factors that are relevant, and in addition, the experienced trademark attorney is aware of many practices, principles, rules of thumb, and techniques that the Examining Attorney will apply to determine whether to issue or remove a 2(d) Refusal. Although the sight (the visual look), sound, and the meaning of the mark are often the most important components of a likelihood of confusion analysis, determinations often turn on other crucial factors too numerous to describe in a short blog. Some of these principles – such as a broad definition of “related industries” greatly expand the scope of potential “blocking marks.” If you are doing a “DIY” search and you are unaware of these principles and practices, your search may be too narrow. You’re asking the search engine the wrong question so you will receive an incomplete answer that will skew your risk analysis and increase your chances of a 2(d) Refusal.
But what if you experiment with the trademark search engine and learn that there is a way to insert “or” to broaden your search? For example, now you try ACME or ACMEE or ACME or AHCKMEE and you get almost 600 “hits.” What are you supposed to do now? You do not want to check all 600! And – even if you did – how do you “check” a “hit?” How do you know whether that particular “hit” is important or not?
Whether a trademark search is done with the help of an Artificial Intelligence search engine, a more “manual” search tool, or a direct search of the Trademark Office’s registry, all trademark searches involve a search for marks that might cause a 2(d) problem and then a process for analyzing the results and determining risks of refusal. Both the search and the analysis requires knowledge, experience, persistence, and judgment.
Trademark searching and registration are not mechanical processes, and even a “paint by the numbers” approach can cause you to miss important marks on the Trademark Register or misperceive their importance. Studies show that an experienced trademark attorney is far more successful at obtaining allowances of applications than inexperienced DIY (pro se) Applicants. In addition, experienced trademark attorneys are much more adept at taking on the “challenging case” in which the Trademark Examiner objects or has concerns about the filing and such issues must be overcome. If an Office Action (an objection or concern) is filed by the Examining Attorney, pro se applicants win approval for their marks only 45% of the time. Experienced trademark attorneys, on the other hand, are successful in overcoming the Office Action 72% of the time! See, Gerhadt & McClanahan, Do Trademark Lawyers Matter?, 16 Stan. Tech L. Rev. 583, 610 (2013). https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2246750
At Kennyhertz Perry, we conduct searches and analyze search results in a cost-effective manner in order to provide useful information and counsel so that you can make decisions that benefit your trademark strategy, your brand, and your business. We would love to talk to you about your trademark needs and find the best strategy to achieve your business goals.
By Arthur Chaykin, Kennyhertz Perry, LLC
Arthur Chaykin is head of Kennyhertz Perry’s Intellectual Property practice. He was formerly a Vice-President of Law at the Sprint Corporation where he served as, in succession, their chief litigator, the head of the business law department, and Vice President of the first legal department at Sprint supporting marketing and sales in all areas of Sprint’s business: international, wireless, wireline, local and long-distance services. At Sprint, he also served as the head lawyer for Sprint Ethics and Compliance program. He has since served as General Counsel to a major manufacturer and distributor of automotive lifting equipment and automotive accessories and has represented numerous clients on trademark matters, copyright cases, trade secrets disputes, food safety regulatory issues, and consumer product safety issues. has over 35 years of legal experience handling trademark, patent, copyright, and trade secret litigation and arbitration.
To learn more about Kennyhertz Perry, LLC, please visit kennyhertzperry.com.
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