Potential Plaintiffs

A trademark search shows

possible plaintiffs.  Does your business’ trademark cause a likelihood

of confusion with other trademarks that are already registered or in

use?  It is impossible to judge without a trademark search.

Potential

plaintiffs are those whose marks are either registered before your

mark or in use before your mark.  Many businesses find themselves as

defendants in either trademark oppositions in the Trademark Trial and

Appeal Board or in trademark infringement

lawsuits in federal district court because of the lack of a trademark

search.  Finding these potential plaintiffs helps to judge the risk of

being a defendant in a trademark dispute.

Alternatively, if a

business has already registered a trademark while your mark is in use,

then you will need to dispute that registration.  Is it worth that

dispute or is it more economical to find a new trademark?

Analysis of the Trademark

A trademark search reveals how strong your trademark choice is.  For example, if there are 50 other similar trademarks in economically related goods/services, then the trademark you chose is particularly weak, especially if the trademark itself is related to the goods/services the mark is to represent.

If a trademark search shows that a trademark is in a crowded field, then it may be better to find a new mark.  Fanciful trademarks are stronger and will probably live in a less-crowded field, making them easier to police and enforce.

There are five levels to trademark strength.

Fanciful marks

* A fanciful/inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or “fanciful” word. For example, “Kodak” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.

Arbitrary marks

* An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. “Apple” for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term “salt” has no particular connection with such products.

Suggestive marks

* A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. An example of a suggestive mark is Blu-ray, a new technology of high-capacity data storage.

Descriptive marks

* A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive character has been established in the term t...