Recently, Microsoft was forced to rename their online storage service from SkyDrive to OneDrive. In July of 2013, a UK court ruled that Microsoft’s SkyDrive name infringed on the trademark owned by British Sky Broadcasting Group. British Sky Broadcasting has channels named Sky One, Sky Sports and Sky Movies. Because Sky also has online services, an online storage service with the name Sky was judged to be potentially confusing to customers.
Whether you are starting up a new business or a new line of products or services, you need a catchy name. You need a logo or symbol that customers will associate with your product. How do you know whether some other company is already using the same name or trademarked design?
The best way to find out is to conduct a trademark search at the United States Patent and Trademark Office: http://www.uspto.gov/products/library/ptdl/services/tmsearch.jsp#
Besides the trademark search feature, there is other helpful information at the US Patent and Trademark Office website. Some tips for doing a trademark search:
- Brainstorm several alternatives to your mark in case your first choice is taken.
- See common reasons why a mark is rejected by the USPTO, http://tess2.uspto.gov/webaka/html/Likelihood/Likelihood_of_Confusion.html
- When doing a trademark search, use root words along with an (*) or (?) to find trademarks that use similar words to yours.
- Pay special attention to the marks of businesses that market similar goods or services to what you provide. There is more chance of a trademark conflict when the businesses sell the same types of goods and services.
- Check sound. Does your trademark sound similar to another, even if they are spelled differently?
- Check appearance. Does your trademark look similar to another?
- Look at design elements. Does your logo look similar to another?
You can also submit a trademark application online at http://www.uspto.gov/trademarks/teas/index.jsp
The Trademark Office advises: “Although not required prior to filing an application, you are encouraged to search the USPTO’s trademark database to see if any mark has already been registered or applied for that is similar to your mark and used on related products or for related services. If your search yields a mark that you think might conflict with your mark, you should then check status to see if the application or registration is still “live,” since any “dead” mark cannot be used to block a new application.”
There are several trademark infringement stories throughout history and there continue to be many suits every year. In 1995, Proctor & Gamble, the maker of Puffs facial tissue, brought a trademark-infringement suit against Potty-Puffs, a new toilet paper for children. In 2010, Digital Chocolate sued Zynga for using the name Mafia Wars. Digital Chocolate said it had released a Mafia Wars game in 2004, along with three sequels through 2009, before Zynga began using the name for their game.
Don’t put money and time into marketing your brand, only to be told you must change your service or product’s name because it infringes on another’s trademark. Do a trademark search and apply for your trademark at the US Patent and Trademark Office.
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