Trademark searches and avoiding having to rebrand in the U.S.
January 19, 2023
In the course of assisting overseas businesses enter the U.S. market, the issue of trademark rights frequently arises. Often a client will have registered their company’s trademark in the UK or EU already and will ask whether that provides them with any protection in the U.S., and if not, how to go about registering their trademark in the United States. In this scenario, the client will have often already invested a significant sum in their branding and has not contemplated the possibility that they may need to rebrand if use of their trademark in the United States would be problematic from a legal perspective.
Unfortunately an overseas trademark registration alone offers no trademark protection in the United States and moreover, because the trademark registration process in Europe is often smoother than the U.S. process, companies believe that registering their U.S. trademark should be relatively quick and painless, often de-prioritizing it over more pressing business concerns.
While there are a several critical differences between the U.S. trademark registration and the process in the EU/UK, the most significant one is that during the “examination” phase, all U.S. trademark applications are actively examined to determine whether there’s a likelihood of confusion between the applicant’s trademark and any existing registered trademark in the U.S. Importantly, this doesn’t happen in the EU or UK where the examination stage of the application process is limited to a determination as to whether there exist any “absolute grounds of refusal” - which means whether the trademark is too generic or descriptive to be capable of being a trademark (i.e. something that actually distinguishing the goods from one company from those of another) - an example of this would be a company attempting to register the word “wine” as a trademark for their line of desert wine.
While the next stage (the opposition phase) in both the U.S, and EU/UK are broadly similar - both afford an impacted party (usually an existing registrant with a similar trademark) the opportunity to file an opposition to the applicant’s trademark registration application which then must be resolved through either negotiation, or through an adjudication process - the practical effect of this difference in registration processes is that U.S. trademark applications are subject to two “checks” on every registration while in the UK/EU there is only one.
To avoid preparing and filing a trademark application with little or no chance of registering, it’s critical to perform a trademark search first. This isn’t as simple as typing the proposed trademark name into the USPTO’s “TESS” trademark search tool, looking at the results and then giving a yes/no answer. In fact, it requires an understanding of how the USPTO examiners search the trademark database, the factors they use when determining whether a likelihood of confusion exists between the proposed registration and any existing registrations, and an assessment of how not only a trademark examiner might assess whether a likelihood of confusion exists, but the likelihood of an existing registrant opposing the trademark registration even if the USPTO trademark examiner appears to find that confusion is not likely.
This process - which typically costs no more than a few hundred dollars - can save a company many multiples of that if it helps them to avoid commence operations in the U.S. using a trademark that they either can’t obtain a federal registration for or, worse, will be actively sued for using. Considering the cost of rebranding, paying for a trademark search at the outset is something we always recommend companies perform prior to entering the U.S. market.
