Selection of a Trademark - Initial Considerations
Prior to adoption of a trademark and filing a trademark application it is often advisable to conduct a trademark search to help avoid, or mitigate against, the greater costs associated with allegations of trademark infringement, passing off and/or the costs associated with re-branding.
Trademark searches can provide a potential applicant with valuable business and market intelligence concerning the availability of a trademark (registrability), the likelihood of encountering potential objections and/or oppositions in the course of prosecution of an application and, depending on the nature of the search conducted, allow the potential applicant to better anticipate any risks of adopting the mark through a comprehensive search of particular common law sources.
Depending upon a trademark’s particular characteristics and the intended channel of trade, consulting an experienced trademark agent prior to adopting a trademark is advisable in order to review both the registrability of a trademark and any potential risks of adoption. The costs of such searches are normally over and above those associated with filing an application, however, the additional information and comfort gained from a formal legal opinion may permit the avoidance of the time, expense and embarrassment associated with adoption of the wrong trademark.
A Canadian trademark search should review the following sources of information:
a) The Trademarks Register of the Canadian Intellectual Property Office to review identical and potentially ‘confusingly similar’ marks within the same or overlapping channel(s) of trade; and
b) A common law search of telephone directories, a NUANS search, Dun & Bradstreet databases, newspapers, domain names, internet searches, trade directories and news resources.
Additionally, if a North American search is required, it is necessary to also consider:
a) The United States Patent and Trademark Office’s Trademarks Register to review identical and potentially ‘confusingly similar’ marks within the same class and identical or overlapping channel(s) of trade; and
b) A search of the Trademark Registries of all fifty states to review identical and potentially ‘confusingly similar’ marks within the same class and identical or overlapping channel(s) of trade
Generally speaking, the deeper the scope of a search, the more thorough your analysis may be in terms of registrability and adoption risks. My recommendation in most cases is to pursue a full or comprehensive search in order to canvas not only applicable trademark registries, but also common law sources in order to reveal any potential adoption risks.
