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When developing a new brand for your business, it’s not as easy as coming up with a clever and catchy name. Rather, you need to consider conducting additional research into the new brand before investing substantial time and energy into its marketing. 

Internet Search:

The first suggestion after conceiving of a potential new brand is to conduct an internet search of the proposed brand to see if any similar, or worse, identical branded product or service already exist in the marketplace. The search can be as simple as typing your proposed brand and associated products or services into an internet search engine and reviewing the results. Your internet search will likely reveal one of the following:

  1. You identify an identical brand for identical goods or services as you are planning to market. At this point, you will want to research alternative brands before moving forward – back to the drawing board. 
  2. You do not identify any similar or identical brands for similar goods or services to those you plan to market under the brand, you should consider talking to a trademark attorney to discuss next steps – deciding to file and where.
  3. You identify an existing business with a similar or identical brand but for products or services that are different than yours. For example, there are several unrelated “Delta”-containing brands, e.g., one for airlines, one for bathroom fixtures, and one for dental insurance. You definitely want to contact a trademark attorney to help evaluate ability to use the mark if this is the mark for which you want to continue.
Assuming your search results fall under (2) or (3) above, a trademark attorney is very helpful at this stage to examine the trademark under a “likelihood of confusion” analysis, which considers a number of factors, including: (1) how similar the existing trademark and proposed brand are; and (2) how similar the respective products or services are. 

Knock-Out Search:

If you do not identify any identical or very similar brands for your proposed brand in relation to the goods or services your business is planning to market under the brand, you should reach out to an attorney to discuss in greater detail. A trademark attorney will likely recommend conducting a search of the U.S. Patent and Trademark Office’s database. The attorney will conduct an initial narrow search for an identical or nearly identical trademark as to your brand in association with the goods or services you plan to market.

This knock-out search can do just that – “knock-out” your proposed brand if any identical or nearly identical trademarks exist in association with similar goods or services. It is a cost-effective and timely way to further discern whether a particular brand is available without conducting a full-blown analysis. It is better to know at this time than after you have designed a full-blown marketing campaign. If the knock-out search comes back with an identical or nearly identical trademark, your attorney may recommend that you consider using a different brand. If the knock-out search results reveal no obvious issues, you are not home free; your attorney will likely recommend supplementing the knock-out search with a full trademark search and analysis.

Full Trademark Search:

A full trademark search involves having an attorney conduct a more detailed search and analysis for conflicting registered and unregistered trademarks, often through the use of a commercial online database that queries the U.S. federal trademark registry, U.S. state trademark registries, business name registries, a common law search, an internet common law search, and a domain name search. As shown by the number of queries performed and attorney analysis conducted, a full trademark search provides a more complete picture of the trademark landscape. 

In the United States, a trademark owner does not need to register or even file a trademark application to establish his or her rights in a trademark, so searching multiple databases for potentially conflicting unregistered marks in addition to a general internet search and/or U.S. Trademark Office database search is important before investing valuable time and money into developing a brand strategy. 

By following these steps, a business can evaluate the availability and risks associated with its proposed brand at increasing detail and costs before committing to a new brand. Furthermore, because a potential brand may be identified as a risk at various points during the evaluation process, it is recommended that businesses have multiple candidates for new brands during the process so that they are not discouraged if a favorite brand is not available for use.  
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