Potential Conflict in Trademark Screening

Posted August 28, 2018 by
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You need a distinguishing, first-in-class name that you can successfully trademark. You want this name to be a unique identifier while ideally remaining relatively easy to protect. After coming up with ideal name candidates and putting them through rigorous and exhaustive trademark screening, you run into a new issue: how are you supposed to know whether these hundreds or possibly thousands of generic and ambiguous sounding goods and services descriptions in relevant classes are potential conflicts for your ideal name candidate?

Goods and services descriptions are intended to limit the hold that an owner has on a mark in order to avoid monopolies on distinguishable marks. For a variety of reasons, some companies have intentionally ambiguous goods and services descriptions or placeholders. Some do this out of a desire to expand their hold in certain regions, others in order to conserve the confidentiality of a product before it hits the market.

For instance, within class five, a soap and perfume company may register their mark under a generic descriptor: “medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.” Class five is primarily pharmaceuticals, which would leave a pharma company twiddling their thumbs and wondering whether they’re going to be faced with a court summons by a perfume manufacturer.

ASK THE RIGHT QUESTIONS

Firstly, consider who owns it. Do they have products like yours? In the case of the aforementioned example, are they a distinguished pharmaceutical company that’s likely to viciously protect their name… or a small boutique and fragrance company that won’t even notice the appearance of your mark in class five?

Delve further to see if they’ve registered the mark in any other classes not relevant to your product or company. Perhaps they’re squatting on a name in order to claim it for future use or maybe they’re waiting for FDA approval and market entry before giving away the exact pharmaceutical description. Asses the risk by how likely they are to expand into your territory.

PROVE IT

Find out when their trademark was registered. Perhaps it’s listed within the “intent to use” domain or maybe it was registered in 1950 and was never renewed and, thus, is not a conflict.  Are they using the mark or able to show proof of use for the mark on or before you’ll be registering your name? Somewhat like third party sellers who purchase and sell domain names for profit, some companies rely on name banking. Rather than starting from scratch to pen and register a brand-new name in extremely crowded classes, they pull from a list “or bank” of names which they have already registered but haven’t yet, and may never, actually use. Therefore, they won’t yet be able to show sample evidence for “proof of use” before your filing date.

THE BOTTOM LINE

It comes back to whether you think this company is going to initiate a trademark conflict lawsuit for a particular mark and class and, if so, whether you’re going to be able to defend against possible similarities. Larger companies tend to have more aggressive trademark attorneys as well as a larger budget for litigation costs and thus, incur a larger risk. For all of these reasons, it is more important than ever that any potential Brand name candidates are thoroughly and rigorously trademark screened, preferably by an agency that has experience dealing specifically in the areas in which your product will registered.

Tags:

Naming | Pharmaceutical Naming | Regulatory | Trademark

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