Maximizing the financial value of your business with good trademark strategy — PART II

1. Trademark searches — Why bother?

OK you have decided on a strong mark that is a good source identifier and legally protectable. Your next step might be to make sure that no one else is using your exact mark or a similar mark in your space.

But is such a search required before you file a trademark application? The short answer is NO. There is actually no requirement that you search your trademark at all before you either file a trademark application or even before you use your mark as a trademark.

But this is often the smart thing to do. Why? you definitely want to know before you run into trouble with an already registered mark and have to rebrand down the line, which will likely result in a lot of wasted time and money. An example of this is if you roll out a mark and that means that you are going to be creating store signage, business cards, stationery, lots of product packaging. You probably should invest a little bit of money into a search before you roll out all of that use of your mark. There are some times when it makes even more sense than other times for you to do a search. For example, if you or your company are risk averse. Maybe you just want to know the risk and mitigate accordingly, or maybe you want to know the risk in order to budget appropriately. Another reason why you might want to do a search is if the mark is going to be especially important to your business. Maybe you intend to use this mark for a long time, or maybe you’re planning a massive marketing campaign, or maybe it’s important to you because it’s a really unique mark or you really love it. It could be really heartbreaking if another person has already claimed it and you find out about that down the road. Maybe the mark is going to be very important to you because branding is your best or only protection for your company. Maybe you cannot take up patent rights, copyrights or trade secret protection, and your name is really all that you have. Maybe you are entering a market or competitor brands are very powerful and you need to play ball. It could even be that your product or service is especially consumer facing. The more consumer facing your product, the more important your trademark is.

2. Types of trademark searches

If you have decided that you would like to do a search, there are at least two different kinds of searches — a general cursory search, and a deeper kind of search, which we will refer to as a professional search.

The kind of search you choose depends on why you are searching, cost, and how important it is for you to have a complete understanding of the mark’s clearance.

Either you or your lawyer can do the cursory search. The goal is to basically see if there are any obvious impediments to you rolling out this mark. You can hire a firm/trademark agent to do the more in-depth search for you. This kind of search is appropriate when you must be absolutely certain of the risks. So, what do the searches cover? The cursory search (the knockout or elimination search), at least uses the United States Patent and Trademark Office (USPTO) website database (or the database relevant to your jurisdiction) to look at all applications and registrations for trademarks that may conflict with yours. In Nigeria, you can request a manual search at the Trademarks Registry, Commercial Law Department, Ministry of Industry, Trade and Investment. The manual search is done per class (type of product/service), and if your search is in classes like Food (class 30), Pharmaceuticals (class 5) or Water (class 32), it could take longer to receive the results.

Searches in such high-volume classes take longer because of the numerous businesses and products in those categories.

The knockout search could also use Google to look for common-law use. Remember, you can get trademark rights just by using a mark. This means someone may be a senior user of that mark out there just because they have been using it for longer than you have. Basically, a knockout search looks at the records of the relevant trademark registry, also looks at Google, and probably also the Corporate Affairs Commission (CAC) public search portal. The CAC name registration by another company is not an actual trademark use, but if there is a company registered out there that is using your trademark, it may be a hint that they are also using your trademark for their product. A discovery that there is a company named the same word as your proposed trademark means you should do some further investigation.

What about professional searches? These involve using a registered trademark agent or a practicing IP lawyer. What does a professional search get you that the knockout search won’t cover? Well, you are hiring someone that does for this living, which should give you a deeper and a better sense of any conflicting marks. They will look more deeply at the records of the relevant trademark registry and do a better Google search. In the US, a professional will also look at all fifty state trademark registries, because there you can file a trademark both federally and state by state. They might even help you to look at some international trademark registries so you can get a sense of whether your mark is being used in other countries. They’ll check copyright registrations, they’ll look at a websites and other copyright common law use, and they’ll be able to look at the CAC for company names in Nigeria.

In summary, should you do a trademark search? YES, if you are building a brand, or the mark is very important to you, or the risk of switching is just too much to bear. What kind of search do you do? There are several business reasons for either search type, but you should pay for the level of search that matches your budget and the importance of the trademark to your overall strategy.

3. Designing and Interpreting Clearance Searches

How do you design and interpret a search? Well, whether you are searching a wordmark, or a logo, or trade dress, the design of the search is similar. What should you be looking for? First, you are looking for exact matches, but you are also looking for marks that are similar to yours in sight, sound and connotation. You should also consider the goods and services relevant to yours because that matters a lot. You should think about what your goods and services are, maybe even describe them in words and then figure out what class you are in, to enable you look in the correct class for similar marks. The most potentially dangerous hits in your search are those that are similar to your mark and in your same class. However, you should also be careful. Just because there is no exact or a very similar mark in your relevant class does not mean there is no risk. Why? Well, if it is feasible that the user of the similar mark in another class could conceivably expand their business into your class, that could be problematic. An example could be a jewelry maker deciding to expand into designer clothing, as jewelry and clothes are under two different trademark classes.

It is smart to look for exact or similar marks in the same class, and exact or similar marks in other classes too, especially for classes that cover related goods.

Finally, searching for design marks is a little bit different. It requires an additional step. The USPTO has hundreds of design codes that they assign to pictures to help you to narrow down similar images. So, when you are designing a search for a logo, you need to isolate the important aspects of your mark and search by the design codes that represent those aspects. For example, if you have elements like animals or stars in your logo you should figure out what the main design aspects are, find the design code and then you can run a search on the database to find similar pictures to yours. The Trademark Registry in Nigeria should cover this as part of the elements of their manual search, so please include a copy of your logo in your search query.

To tie things together, when you are creating a search for a mark, you should of course run the exact name. Then you should think creatively, change the spelling to get similar sounding names with the same sound or connotation. Run synonyms to your mark and look especially at the same class as your goods and services, but don’t discount looking at other classes especially if the goods and services are related to yours. For design mark, run the design codes that match with your mark in the same and similar classes if available in your jurisdiction.

4. Interpreting Your Results

After you design a trademark clearance search, you need to interpret your results, hopefully with the help of a professional.

There will likely, almost definitely, be marks in your search that will cause you some concern. Remember, the goal here is to quantify your risk so that you can make an informed business decision of whether and how to move forward.

As you are interpreting a search in rank order, be most attentive to exact or similar marks in your class, then exact or similar marks in related classes, then less similar marks in your class. Depending on which kind of meaning you chose, you may have to broaden your search to make sure that you are doing a good search to catch all the names out there that might conflict with yours. As you are going through the search you should note the number of potentially problematic marks that stick out to you. The more marks there are, the more risk you have of difficulty registering and enforcing the mark. Do not assume that if there are many marks that coexist, what’s one more? That should mean that you could coexist as well right? Unfortunately, this argument is unlikely to succeed with trademark examiners. It just means that any one of those marks may potentially be a mark that they would cite against you in the registration process.

As you find potentially close marks, you should also note who the owners are of the marks. Theoretically, any owner can challenge you, but the risk might be different. A mark that is owned by a big company, rolled out at a big campaign, might present a different level of risk to you than a smaller local company. So, note them all but make sure that you check who is behind the marks. If you are very worried about a potential mark, it is possible to see whether the owner of that mark has challenged users in the past (a Google search under the ‘news’ column might be useful here). How often they have challenged them and how close those marks were, either in sight, sound or connotation to the marks that they challenged. That way you can gauge your risk somewhat about whether they might challenge you and their chances of success.

Finally, you should check to see if any of the marks that concern you are still in use. This is because sometimes, registrations continue after the use stops and the holder cannot enforce a right against you if they are not using the mark. Technically, you would become the senior user if that other owner had stopped using the mark. If you find that there is a registration on file but they are no longer using the mark, you might be able to petition to cancel that registration in jurisdictions like the US, which is a use-based jurisdiction.

In Nigeria, a petition for de-registration of a mark can be brought for non-use for a continuous period of five (5) years. Remember, If you are not using a mark, your registration is subject to cancellation.

Remember, this analysis is for a business purpose. There may be legal reasons to choose a different mark which may come to light as you’re doing your trademark search. These business reasons to choose a different mark are just as important as the legal reasons. Another business reason is that the trademark might have a bad connotation.

It might not be a great idea to trademark ‘Corona’ during this pandemic (the popular Corona beer brand was already firmly established before 2019) or ‘Ego Agbala’ for a finance service in south eastern Nigeria.

You should also watch the connotations of your mark in foreign languages that are spoken in countries where you want to do business. A classic example of this is Coca Cola’s initial struggles with the literal translation of the brand name in China into unflattering terms like “female horse stuffed with wax” or “bite the wax tadpole”. You also have to think about whether your mark might be clear in your jurisdiction but conflicted in other jurisdictions or classes where you might have expansion plans. Finally, there may be a business reason to adopt a different mark if you find that all the websites related to that word that you would like to make a mark are taken. Although website use is not the same as trademark use, if you want to have a consistent branding strategy and you discover that the websites you want to use are taken, particularly if you are a social media or an Internet-based company, that may be a reason to use a different mark.

In summary, you should search and interpret your results broadly to gauge your level of clearance and therefore be able to quantify your risk with adopting any particular mark. Hopefully with the aid of your information and some counsel, you will have a sense of whether this proposed brand is going to meet your legal and business needs.

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