The devil is in the trademark details

Why is it sometimes so easy to check product trademarks?

The first trademark ever registered

If you know something about trademarks, and plan in advance for clearance of your name before you zoom down on a short list of finalists, getting trademark cleared names can often be quite easy. Yes, really. But only if you know that millions of trademarks already exist and for a simple, clean immediate clearance you are going to need a unique new word – at least in your chosen field.

For example: Ben and Nancy invented a smart new mousetrap that provided specific benefits to the homeowner. They decided to call it Bennatrap which they thought was a great name since it was both descriptive – Trap, and also implied Benefits even though it did not directly say that. And of course only they noticed it was coined from Ben and Nancy too. So it had some of their ego and hard work wrapped up in the name as well.

Then they remembered the two golden rules of naming: Nothing else matters if the boss doesn’t like it and her lawyer doesn’t like it.

So they quickly went to the USPTO online trademark search database and nervously entered Bennatrap. They were very happy to get this response:

US Trademark search database

No TESS records were found to match the criteria of your query.

But to be sure, since they had heard names were filed phonetically, they also typed in Benatrap, Benetrap, Benitrap and even “Benna Trap”.

Not a final check by any means, but a major step forward and confidence booster that their IP Lawyer was likely to approve them registering and using the name.

In fact, feeling emboldened they even checked some of their international markets like UK, EU, Brazil, Mexico, Japan, etc. See International TM Checking.

Why it is it sometimes so hard to check trademarks?

Fast forward six months and Nancy and Ben are now working on their follow up model after their first mouse trap was so well received. After talking to a number of customers, they learned that the users did not see a raft of benefits with that model. But they did see one over arching benefit and that was the fact you could see if a mouse had been captured without having to touch the cage or get your fingers dirty.

It seemed so obvious and appropriate therefore that they should call the new device:  InSight

Then they remembered to check registered trademarks again and the USPTO TESS service returned this message:

TESS was last updated on Fri Oct 8 03:47:23 EDT 2021

TESS Homepage New User Form Structured Form Search Free Form Search Browse Dictionary Index Search OG previous TOC list next TOC list Images List Bottom On-line Help

Please logout when you are done to release system resources allocated for you.
List At: OR
to record: 16291 Records(s) found (This page: 1 ~ 100)

What?  Over 16,000 records reference the word Insight? In fact so many new filings that not even one on the first page had even been approved for registration so far!

Key components of a trademark registration

Now what? How can it be? They surely didn’t want to pay a lawyer to dig through so many names as they got a harsh lesson in reality that most common names are already taken. Did it mean they couldn’t use the name? Maybe. Maybe not.  Trademarks are filed by category so maybe they could figure out the mousetrap category and take it from there.  But what exclusivity would they have on the name? None. Even if approved under special descriptions it would be considered a weak trademark from a legal point of view.

How set are you on a given name? Is your heart broken when your first choice is not available or not unique enough? Or do you want to get on with the project and avoid legal issues now and in the future? Maybe it is time to revert to a name like BennaView and use a tagline like “Providing insight into what you have caught“.

Trademark checking details

While the examples above are fictitious, we did once work with a real client where the conclusion was that Insight was the perfect name for their new Automatic Identity Eye Recognition system. And since it was a new product in a completely new application, their lawyer (after extensive checking) filed for a trademark using just such a description. Yes there were many other optical and electrical products, but they didn’t want broad industry coverage. Just their own specific niche. The trademark office approved and granted them registration rights. The product line was so successful it was spun out and a new company created and these devices are now used as people auto check machines in airports and other security locations around the world.

Let’s look at those kind of trademarks in detail.  Firstly, all trademarks are filed in one or more Categories – International Classification Code. Obviously Starbucks® Coffee is filed under Drinks from day one. Since then they have had many different additional filings, including a recent one in the Retail Stores Category and even one for Entertainment and Educational Services!

Are they registered in all trademark categories?  No. In fact almost no trademark is – but Starbucks might be reaching Superbrand status so I don’t suggest you even think of using the name, however unique or remote your product or service is. They probably have a lot more money than you.

There are 45 trademark classes. 1 through 34 are for products only. The rest are for services. So, for example, when Starbucks Coffee is registered for entertainment services it is registered in Class 41, but when registered for Food and Drink Services, it will be under Class 43. Of course, you first file under your major category so you will find Starbucks and many of their special concoctions filed under Class 30 – Coffee, tea, etc.

The problem is that trademark law is very old. When these classes were first established, electricity didn’t exist, let alone the internet and no mechanism exists to add additional classes as it would be enormously complicated to migrate existing products and services to newer, perhaps more detailed classes. The world trademark council members have therefore agreed that a name does not have to be unique even within a given class. It just has to not be “confusingly similar”.

So, for example, in Class 9 (the most crowded as it is all electronics, hardware, software and optical goods) the name Sunforce is used for different energy devices serving different needs. A mobile accounting application could have the same name as embedded instrument software, as another example, since they are not confusingly similar.

But why aren’t many common words registered as trademarks? Well you cannot register “generics”. One of the USPTO’s own examples used to point out you can’t claim the rights to the name Soap for some soap product you make, because then how would other people describe their products – wax to wash your hands? After all, they couldn’t use the word soap without saying Soap® is your registered trademark. Ironically, if you lookup the word Soap it is a registered trademark, but not in the detergents category (Class 3). Rather it is registered as a trademark for software (Class 9) where it is not normally used and not a generic word in the common literature of software products.

So far we have your name must not be generic and must be unique within its class for you to have a chance of it being registered as a trademark. One other big item to consider is pronunciation as names are filed phonetically. So Cisco, Sysco and Sisco are all the same in terms of trademark law. The only reason all of these exist as registered trademarks is that they are in different classes and are unique their own fields. Similarly Phone and Fone are identical. Maybe Vone too (especially in Germany). An extension of this is that singular and plurals are considered the same too.

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