There are millions of businesses with registered trademarks and many produce numerous products and services. Unless it is a totally fanciful mark (a “made-up” symbol, like the Nike® “swoosh”), it is doubtful that your selected mark will be completely exclusive and not in use, in at least some similar fashion, by someone. The main question is how similar your mark can be to another mark and still avoid infringement? You may get away with using a similar mark to an already registered mark for several years, but when the owner notices you, it may be very expensive to make a change.
It is difficult to use a trademark which is similar to any national brand. These brands have such wide market sweep, and are so dedicated to protecting their marks, that it is difficult to avoid infringement issues, even if the goods and services are not identical. In addition, a federal anti-dilution statute offers the power to well-known brands to stop imitators whose marks are similar to theirs and that may damage their brands, even if the goods and services may be different.
If you discover that somebody is using the same or very similar mark that you want to use, you have to get answers to the following questions:
- Is it used as a trademark?
- Is it used for a business purpose?
- Is it used in the same field of commerce?
- Is it a famous brand?
To be used as a mark, a word, phrase or symbol must be used as an “identifier of source,” that is, the mark must be used commercially to identify the source of the goods or services. If it is not, even a similar expression might be registrable as a trademark.
If the mark is used for a business purpose, but is in a different field of commerce you may also be able to register it. Registrability depends on a combined sliding scale of similarity: Goods and services that are highly similar require more difference in the marks than do goods and services that are highly dissimilar.
If you have a trademark search done and don’t find exact matches, but some of the marks found are similar, either in sound or in spelling, you must analyze the likelihood of confusion and evaluate the chance that your mark will be rejected by the USPTO or by a court (in case of an infringement charge). This analysis is one of the most difficult parts of trademark law practice. An experienced trademark attorney can do such analysis (trademark search) and can help you evaluate your chances of both achieving a registered mark and avoiding conflict with others.