The key to building a strong brand starts with the selection process. Your brand may be the first message that current and prospective consumers receive about your product. After repeated encounters with a mark and a product, your customers begin to connect your brand with the corresponding product values, whether that value is consistent quality, high style, price, exclusive features, ease of purchase, e.g., location of retailers, ease of use, etc. Selecting the word, logo, or phrase that will be the shorthand for a brand promise presents a significant opportunity (and challenge) to start a brand off right.
The first thing to know is that all trademarks are not created equal; some marks are more distinctive than others. Marks can be strong or weak. Made-up (fanciful) marks like Exxon® and Travelocity®, and arbitrary marks, such as Apple® and Amazon® are the strongest. (Arbitrary means that the term is an actual word but that word is used as a mark in connection with a service or product completely unrelated to the meaning of the term.) Suggestive marks, e.g., Microsoft® and Coppertone®, that don’t expressly tell anything about the product are the next strongest. Merely descriptive marks, e.g., Little Tavern™ for a restaurant or MultiAccount™ for debit cards, that communicate something immediate about a feature or attribute of a product are considered weak and can be either unregistrable or costlier to register, and can be difficult to enforce and protect. Generic terms, relative to specific goods and services, are unregistrable as trademarks.
However, when considering the registrability of a mark, we look at both how distinctive a mark is and whether it is exclusive. Because the function of a mark is to convey a single source to customers/prospective customers, it is essential to select a mark that is unique – at least for the product and industry you are offering. After first selecting a distinctive mark, the next step is to conduct “clearance” to determine whether a proposed mark is exclusive. Clearance is designed to avoid an infringement claim and to minimize a likelihood of confusion refusal at the USPTO. A challenge to a trademark will inevitably be costly and, if successful, can result in forcing a name change and potentially the loss of goodwill associated with the mark, along with the costs of selecting, clearing and adopting a new mark and the costs of re-launching the product with a new name.
It is not enough to merely compare marks side-by-side and focus on the differences, because the test is not whether the marks are different or distinguishable. Rather, recognizing that consumers have imperfect memories, small variations between marks that may seem significant may not be considered significant under trademark law. For example, DYNATECH and DYNATEK are considered confusingly similar for auto parts; CORVUS and CORVO are confusingly similar for wine; MYSMILEKIDS and MYSMILE are confusingly similar for dental information.
Meaning, making small spelling changes to an actual word may not be sufficient (e.g., ‘ch’ vs. ‘k’ or ‘s’ vs. ‘z’) or adding a generic word, e.g., “company” is not sufficient to distinguish the marks. Simple vowel substitutions, phonetic equivalents, and transpositions may not mitigate a likelihood of confusion. Minor, technical variations between marks may not be considered significant under trademark law.
In fact, searching the USPTO database for only the identical mark is not nearly adequate to determine that you are clear to adopt a mark. While it may be very good news that you didn’t find the same mark on the USPTO database, keep in mind many brands are not registered. However, if the mark is in use in commerce, their owner has accrued common law—unregistered — rights wherever the mark has been used.
Moreover, the legal standard for trademark infringement is likelihood of confusion. Consumers, even professional buyers, are generally acknowledged as having imperfect memories. As such, two similar, but non-identical, marks may be considered confusingly similar. For example, the USPTO found the marks CANNA.BIZ and eCannabiz confusingly similar for marketing services and KANNAWAY and KANNADERM for hemp based personal care products.
