Excuse Me, But I Ordered Patron not Porton - Why a Computer Generated Trademark Clearance Search is Never a Substitute for an Attorney’s Legal Opinion
A recent decision by the Trademark Trial and Appeal Board (TTAB) involving The Patron Spirits Company highlights the scope under which two trademarks are evaluated for similarity. Understanding this can help you select a trademark that has minimal potential for opposition and see just how thorough of an analysis a trademark clearance search requires.
A federal trademark registration provides notice to the entire world that your company is the owner of a trademark and is therefore granted exclusive use of that mark for the categories specified in your trademark application. However, it is important to note that others can seek cancellation of your trademark registration if they can show that; it is confusingly similar and they began using their mark before your trademark application was filed.
The best way to ensure that this does not occur is by conducting a comprehensive trademark clearance search. This will allow you to be prepared for potential opposition and have a strategy ready, rather than be caught off guard.
What is a Comprehensive Trademark Search?
The phrase ‘comprehensive trademark search’ is all over google, and the first few results are usually Legal Zoom and a few other form mills. Do you want to trust your business's intellectual property to a company that advertises that many people finish their trademark search in “under 15 minutes”? These form mills cannot provide you with a legal opinion because they are a form mill not a law firm.
A computer algorithm is not a substitute for a knowledgeable attorney, and if someone tells you otherwise, your immediate reaction should be one of concern. If the trademark office is going to spend more than fifteen minutes evaluating your trademark, shouldn’t you do the same?
REVIEW OF YOUR TRADEMARK REGISTRSTION APPLICATION BY THE TRADEMARK OFFICE
Trademark law is full of nuances that can pose potential problems if you fail to understand and account for them. One factor that is evaluated with every trademark is the sound and connotation of the mark. A recent case decided by the TTAB can help you understand how strong of a magnifying glass is used when deciding whether two trademarks are substantially similar and likely to cause consumer confusion as to the source of goods or services.
Patron vs. porton
In 2011 Pisco Porton, LLC was granted a federal trademark registration without so much as an office action being issued (See - What is an office action FAQ?). However, two and a half years later, Patrón Spirits International AG, the owner of the trademark for Patron, another spirits manufacturer, sought to cancel the Porton trademark registration and succeeded in doing so.
Trademarks are Compared based on Real World Use, It is Not an 'On Paper' Analysis
Comparing two trademarks for similarity requires doing so from a real world standpoint, not just on paper. In its discussion of the Patron and Porton trademarks, the TTAB discussed not just the sound and connotation of both trademarks, but also the actual use of them. Products associated with both trademarks are commonly sold in bars or restaurants which presents several nuances.
Bars and restaurants are often a noisy environment, therefore making it more difficult to distinguish between Patron and Porton. This is further complicated by the fact that customers in most cases do not see the actual bottle, and the customer and bartender are left to rely on whether they heard/said Patron or Porton.
It is these finer details that can make or break your trademark registration. Of note again in this case is that the trademark office issued a trademark registration for the marks Porton and Pisco Porton without any objection. Therefore, it is important to keep in mind that a trademark clearance search and successful registration of a trademark are simply the initial steps in the process, but not the only steps.
Making sure that you are aware of any potential opposition can be invaluable and provide you with an opportunity to strategize. You may decide the risk is too great and instead select a new trademark or may decide to forge ahead. In either case, you are better off making this decision yourself, rather than letting trademark law make it for you.
A knowledgeable attorney can be an asset when dealing with any legal matter. If you have questions or concerns about your intellectual property I would be happy to discuss your situation.