Trademark Screening 101: How we get it done at A Hundred Monkeys
It’s not all fun and games over here at A Hundred Monkeys. We, too, are governed by the laws of the United States. Specifically, trademark law happens to be very much a part of our business. We’ve gotten to know the intersection of trademark law and naming over the years. We’ve designed our process in a way that sets up clients and their lawyers to quickly file a trademark application once we’re finished on our side.
Call us meticulous, we just don’t want anyone to fall in love with something they can’t have. The legal landscape can be tricky and sometimes, even after taking all the precautionary steps, rejection can still rear its ugly face. The following is a one-stop-shop resource for how we navigate trademark law in our naming process. What you’ll find here are notes on trademark law from an intellectual property (IP) attorney and the lowdown on each of our behind-the-scenes steps.
A note from Trevor Caudle, Esq. on trademark law…
“Trademark law is centered around the consumer, the goal or function being to protect the consumer from confusion when purchasing goods and/or receiving services. Yes, the trademark registration will protect a mark from someone else coming in and stealing a brand or business’s thunder, but at the heart of it all, it’s to help consumers.”
A quick rundown of our process and where trademark comes into play:
- Naming opportunity
- Round one: Knockout search, Preliminary trademark screening
- Round two: Knockout search, Preliminary trademark screening
- Contenders: Deep legal
- Selection: Deep legal
Knockout search: Intake – Opportunity – Round one – Feedback – Round two – Contenders – Selection
First up is the knockout search. This is both a general and pointed web search to find any obvious conflicts for each name. We run a couple of searches per name and use this to prime our list for the next stage, the preliminary trademark screening. Knockout also gives us further insight into the competitive landscape, which helps guide our name selection strategy.
Preliminary trademark screening: Intake – Opportunity – Round one – Feedback – Round two – Contenders – Selection
Next up, we send a batch of names to an IP attorney for the preliminary trademark screening. This step is a cost-effective and timeline-sensitive way to make sure the names we present to our clients don’t have any glaring legal conflicts. Most often, we only screen in the United States, sometimes internationally too.
During this stage, the attorney will run the list of names against the United States Patent and Trademark Office (USPTO) database then assess the risk and availability of each name. After cataloging their findings by rating each name, they send the list back our way. In our case, the screened names are returned to us rated on an A through F scale—A meaning little to no risk and F being buckets of risk. We only present A’s and B‘s to our clients because they have the highest likelihood of being trademarked. This step is essential in helping everyone focus on names that aren’t dead on arrival, and if we’re doing our job right, different from the competition.
How the names are screened against the USPTO database is based on how the company intends to file, defining themselves under certain trademark classes with a description of their goods and services (G&S). When screening, the aim is to see if there’s anyone else out there who has registered and defined themselves in the same or similar manner. Trademark classes are established by the USPTO and a full list of them can be found here. Think of trademark classes as the Dewey Decimal system of all the different types of businesses and a company’s G&S as their plot summaries. G&S are specific to each company and/or product and here in the US, our laws require businesses to only list the goods and/or services they actually intend to provide. In other countries, their laws might work differently.
A note from Trevor Caudle, Esq on goods and services…
“When filing here in the United States, you can only include goods and services (G&S) you are selling or have a bonafide intention to sell. You can’t include xyz, when only selling x just because you don’t want anyone else to sell y and z in your space. Just wanting someone else to not sell something too isn’t enough. Looking at an example, say you’re building a tennis tournament scheduling software. When filing you can’t include tennis shoes, tennis balls, tennis rackets, etc. just because maybe someday down the road you might expand or you don’t want anyone else to come along wanting to use your mark in the tennis space.“
The preliminary screening doesn’t cover everything. There is still potential for common law conflicts. We’ll get to what these mean in the next step of the trademark screening. At this point in our naming process, we want to get names in front of our clients. The major takeaway from the preliminary screening is to present options that have a decent likelihood of being trademarked. After presentations and discussion, we have clients come to a concentrated shortlist of about three to five names to then take into a more thorough legal clearance with their counsel. What we like to call, deep legal.
Deep legal: Intake – Opportunity – Round one – Feedback – Round two – Contenders–Selection
The last step in the trademark screening journey is deep legal. At this point, we’ve arrived at the end of the creative process and the remainder of the legal journey is in the hands of the client and their legal team. We’re still around to help with selection and zeroing-in on a final name, but first, due diligence is in order.
The deep legal process starts with an in-depth search to find potential risk factors that could get in the way of trademarking a name. Legal counsel is essential here. They’ll advise on how in-depth the search needs to be and what the prospects look like. The timeline of this search can vary depending on counsel, which trademark classes are at play (some are more crowded than others), and other priorities.
This is where common law conflicts are assessed. These conflicts are typically businesses in operation who haven’t registered their mark (name). Even though they haven’t registered, these businesses have trademark rights because they have customers. The USPTO intends to protect those consumers. So digging up these potential conflicts is important, yet time-consuming. An attorney will be instrumental in assessing whether any potential common law conflicts could cause a bump in the path toward registration. How these are sought out can vary by legal team, typically taking the form of a massive research report (hundreds of pages) from an independent research organization. The legal team will dive into the report and assess the risk for trademarking each specific mark or name. This risk assessment works to find a clear path forward to registration, meaning there is room for the mark to exist in the space without being confused for another. Whatever path it may be, there needs to be a way in and a lawyer is the best resource for finding it.
A note from Trevor Caudle, Esq. on trademark rights…
“Folks receive trademark rights when they register their mark with their governing body. Think of it as “casting in stone” their place in a particular trademark class, ultimately solidifying their IP rights. However, these rights are only protected in the registering office’s zone, or jurisdiction. When registering with the United States Patent and Trademark Office (USPTO) you’re protecting the mark nationally, within the bounds of the US and our territories, not internationally. International registration gets tricky, because there are different laws and treaties that govern each country’s trademark practices.
Trademark rights exist, like all trademark law, to protect the consumer. How we assess and weigh those rights depends on the scale of the mark and if the business has actually registered the mark. This all gets back to making sure there’s enough room for you in the space and that you’re different enough from others in the space too. The reason being, when filing you have to make it clear to the examiner that you aren’t doing what any other mark is doing.”
After a clear path has been established and the proverbial green light has been given from the legal counsel, it’s selection time, then filing time. A filing is queued to be reviewed by a USPTO examiner. Here in the US, it typically takes between three to five months to receive a response from the USPTO—a serious chunk of time. It’s this time-consuming factor that has made us so meticulous from the get-go. If all goes well, the application is approved and it’s off to the races. However, if it’s denied, there are still a few options to pursue the mark, but essentially it’s a reset button back to the drawing board.
A note from Trevor Caudle, Esq on using the mark before USPTO response…
“There’s a word of caution however before using the mark after submitting your application. Yes, you can start using it and begin acquiring users and common law trademark rights, however this should be based on your legal risk assessment. Walking through this, if you were to move forward and start using your mark by developing the brand, design, website, product, etc. you’re spending money. You’re essentially investing in your business under a mark that still has a chance, upon review by the USPTO examiner lawyer, to be denied. There’s potential for some sunk cost here. This is why having legal counsel is important because IF you could get a response back from the USPTO overnight you could just submit another application upon refusal and I’d essentially be out of a job. But since it takes months to get a response back, it’s wise to have legal counsel because they’ll help predict what an examiner might say and also help assess the particular risk for your situation.”
With a name in hand and a filing in queue, we’ve arrived at the end of our process. Our trademark stages may shift slightly depending on the project, however we never like to stray too far. Afterall, we’re in the business of making every word count.