• Why do I need to search other trademarks?
  

  Why do I need to search other trademarks?

  If you are currently using, or plan to use a trademark, it is always a good idea to see if there are similar marks that could be confused with yours, or could affect your ability to use and protect your trademark. If there are any potentially confusing trademarks registered with the USPTO, those could affect your chances of registering your own trademark. Additionally, if there are any potentially confusing trademarks being used in commerce, but which haven't been registered, these could also affect your ability to register—as well as use—your trademark.

  
• What is considered a trademark conflict?
  

  What is considered a trademark conflict?

  A conflict exists when one trademark is confusingly similar with another trademark already registered and/or being used in commerce. The principal factors used to determine if there would be a chance of confusion include:

  • The similarity of the marks
  • The commercial relationship between the products and/or services

  In some cases, trademarks that may seem similar can coexist if they are unlikely to confuse a consumer. For example, two trademarks that may seem similar can both be allowed if they are used for unrelated products or services, and are therefore unlikely to cause consumer confusion. Here are some examples:

  • "Acme Jeans Co." used for clothing and "Acme Computers" used for laptops may both be registered trademarks (and both may be used in commerce in their respective areas); but
  • "Acme Computers" and "Acme Technology," both used for computer software, are unlikely to both be registered because consumers may confuse one for the other. The first user may also sue the second for infringement, especially if the first user has federally registered the mark.
  • "Birdie" used for soaps and "Birdie" used for real estate services may coexist; but
  • "Birdie" and "Birdy Body Wash," both used for soaps, are unlikely to be able to be registered because consumers may confuse one for the other.

  
• Is a search of federal and state trademark databases enough to uncover a possible conflict?
  

  Is a search of federal and state trademark databases enough to uncover a possible conflict?

  Not necessarily. In some cases, someone may have "common law" trademark rights simply by being the first to use a trademark in commerce—neither federal nor state registration is required for common law rights. Someone with common law rights can challenge your use or registration of your trademark.

  For these reasons, it's a good idea to check beyond state and federal registries, such as registered corporate names and use on the Internet. These are included in both the WorldScan International and Federal, State, and Common Law packages.

  

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