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A mark’s category of distinctiveness is then used as an aspect of the likelihood of confusion test. The law forbids the commercial use of any mark that is “likely to cause confusion, or to cause mistake, or to deceive.” Likelihood of confusion is hard to define, and courts are inconsistent in analyzing it. At the heart of evaluating the potential likelihood of confusion between marks is the use of multiple factors to make a fair evaluation of all the circumstances. The distinctiveness of a preexisting mark is the most important factor. Some of the other factors considered are the similarity of the look, sound or feel of the marks, the similarity of the underlying goods or services, the similarity of the goods’ distribution
channels, the costs of the goods, and the sophistication of the typical buyer. Remember, the likelihood of confusion test in conjunction with the concept of distinctiveness governs how similar a mark can be to a preexisting mark used in the same territory, and ultimately, how much protection the new mark itself will enjoy. After conceiving a new mark, but before you attempt to establish it in the marketplace, you’ll need to clear the mark of potential infringement issues
through a comprehensive availability search and investigation analysis. Simply put, you need to see if someone already established a mark that looks, sounds or even feels like yours (the search), and if so, do you have any right to still use yours (the analysis). A truly comprehensive search is nationwide and includes various state and federal databases such as company name and DBA databases, individual state trademark databases, the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS), and Library of Congress databases, as well as business databases like Dun and Bradstreet and other online sources. As you can see, searching on your own, other than quick knockout searches online, is simply not practical. Also, using a trademark registration company may be cheaper than an attorney in the short-run, but these companies likely don’t complete a fully comprehensive search. An attorney, however, will provide you a thorough comprehensive search report. And because of the sheer number of marks in existence that report will very likely include a number of preexisting marks similar to yours. At this point you’ll be very happy you hired an attorney to provide a legal analysis of the search report. An attorney utilizes the likelihood of confusion test, distinctiveness and territory of use to analyze and prepare an opinion describing any potential conflicts as well as your risks in using the mark. Remember, finding no reference to your proposed mark in every database is still not a guarantee it’s available. Because so many marks are unregistered and unsearchable, the possibility of inadvertently infringing on some obscure yet protected mark
always exists. Conversely, discovering that your ideal mark is already in use doesn’t necessarily prevent you from using it as well. If you do find that your mark (or something resembling it) is already in use, you’ll have to consider the legal issue of whether using it is likely to cause confusion in the marketplace. Only a trademark attorney can give you a fairly reliable answer on this complex question, but even that is ultimately a very educated guess because the standards for determining likelihood of confusion are so imprecise and case dependent. No attorney will clear a name of all risks of infringement. Empowered with all the information, you will ultimately have to decide if the reward outweighs any potential risk. Establishing your dominion in the marketplace over a commercial mark is achieved through use, registration, or both. The two different methods provide very different levels of protection. The fundamental concept is that the party who first uses or first files a registration application, whichever comes first, has superior rights to a commercial mark within its territory of use. To establish first use all you have to do is put the public on notice that you believe the mark is yours by using ™ on your goods and trade name. You should carefully document the date of first use and always properly use the trademark. For instance, always use your mark as a descriptor of your goods or services, and never as a noun or verb – “iPods® sound great”, over time can legally genericize an otherwise enforceable mark causing it to lose protection. “iPod® music players sound great” is the correct way to refer to this product and maintain its enforceability.
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