Potential Conflict in Trademark Screening

You need a distinctive, first-in-class brand name that you can successfully trademark. You want the name to be a unique identifier that is easy to protect. After creating names and rigorously trademark screening them, you run into a new obstacle: how do you identify potential conflicts within the hundreds (or possibly thousands) of generic and ambiguous-sounding goods and services descriptions in the relevant trademark classes?

Goods and services descriptions are intended to limit the hold an owner has on a trademark to avoid monopolies on distinguishable marks. For many reasons, companies intentionally use ambiguous goods and services descriptions or placeholders. Some employ this tactic to expand their hold in certain regions; others do so to protect a product’s identity before launch.

For instance, a soaps and perfumes company may register their mark in Class 5 (primarily reserved for pharmaceuticals) 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.” This may create confusion and leave a pharmaceutical company wondering if they’ll be served by the soaps and perfumes manufacturer with a court summons for trademark infringement.

First, consider who owns the trademark. Do they have similar products? Is the company a big pharmaceutical manufacturer that’s likely to protect their name? Or is a small boutique company that may not notice your mark’s entry in Class 5?

Dive deeper to see if they’ve registered the mark in any classes that aren’t relevant to your product or company. Maybe they’re squatting on a name to protect it for future use or waiting for an FDA approval before making proprietary information public. Assess the risk by determining how likely their product is to compete with yours.

Find out when the company registered their trademark; perhaps it’s listed in the “intent to use” domain. If it was registered in the past but not renewed, then it’s not a conflict. Are they actually using the mark? If not, are they able to show proof of use on or before your filing date? Like third-party companies that purchase and sell domain names for profit, some companies create large banks of names they may never actually use. They might not be able to provide proof of use on or before your filing date.

It all comes down to whether or not the company will initiate a trademark infringement suit for a particular mark and class. If they do, are you able to defend your mark? Larger companies typically have larger litigation budgets and, as a result, are willing to take on more risk.

For all these reasons, it’s more critical than ever to partner with a branding agency that has experience in your trademark classes and that will create and rigorously trademark screen potential names for your product.