September 04, 2014

Trademark Searching Like A Rock Star

by Guest Blogger

Regular readers of the blog will know that I'm currently watching a lot of Music Choice on cable TV due to its magical ability to soothe my 2-month old daughter. In the process, I'm stumbling across random bits of trademark news. A couple weeks ago, the Music Choice "Did You Know" trivia referenced Prince's decision to change his name to a symbol due to a trademark dispute. Recently, I came across another piece of music trivia containing an important lesson for aspiring rock stars (and brand owners in general).

According to Music Choice, the pop-rock band OneRepublic was originally known as "Republic". The band changed its name to OneRepublic in 2006 - not as an homage to the "Pledge of Allegiance" - but to avoid legal conflicts with other bands using the word "republic".

The band filed an "intent to use" federal trademark application for its new name in February 2006. The application matured into a federal registration in 2007 after the band began using the new name in commerce. Here is an early ad for a show at the Glass House in Pomona, California:

09 04 14 Blog Onerepublic Full Size

The timing on the trademark application was fortuitous. The band released its debut album in 2007, and the lead single, "Apologize", became a huge international success after it was remixed by Timbaland. The band was subsequently invited to perform "Apologize" on Fox's hit TV show "So You Think You Can Dance", and the rest is history:

A band's name is one of the most important business assets that it will own. Fortunately for OneRepublic, the problem with its name was caught early enough that it could make a change before spending vast sums on marketing, advertising, PR, branding, etc. Moreover, the name change allowed the band to eliminate any potential liability for trademark infringement.

Not everyone is as lucky as OneRepublic. To avoid a trademark disaster, you should conduct a preliminary screening search to identify any obvious conflicts between your trademark and a pre-existing trademark owned by someone else. If you find an obvious conflict, then you should not use the trademark.

Preliminary searching is a two-step process:

Conduct a trademark search on the USPTO database

. A trademark search on the USPTO database will help you find registered trademarks and prior pending applications that may prevent registration due to a likelihood of confusion. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. If confusion is likely, then you should not use the trademark.

Conduct a Google search

. You need to do a Google search because many trademark owners with valid and protected trademark rights do not register their marks with the USPTO. You still need to consider these "common law" marks because trademark rights are based on first use in the United States. A trademark owner obtains rights by being the first in a given market to use the mark. Once the owner obtains such rights, it can stop newcomers from using similar marks that are likely to cause confusion.

Even if the preliminary search does not disclose any obvious conflicts, there still might be obstacles to the use of the trademark. The USPTO database contains millions of records, and the searcher will need to make some judgment calls in developing a search strategy. This creates a margin for error - especially when it comes to band names since they do not always follow established rules of spelling, grammar, construction, punctuation or meaning (e.g., The Beatles, Lynyrd Skynyrd, Led Zeppelin, Guns N' Roses, Phish, Def Leppard, Mötley Crüe). There are similar limitations with a Google search. For these reasons, preliminary searches should only be used to eliminate trademarks that are clearly unavailable.

If you want a definitive answer on the availability of a trademark for use, then you will need to order a full search from companies like Thomson CompuMark and Corsearch that specialize in trademark searching. A full search covers USPTO and state trademark registers, trade and business directories, domain name registries, common law sources, and proprietary databases. A trademark lawyer can help you order and evaluate a full search report. If the search report shows that trademark is available for use, then you should file a federal trademark application so you can stake your claim in the mark before someone else does.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.