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OVERLOOKING OR FOREGOING A NAME SEARCH CAN BE A COSTLY MISTAKE
by David A. Weinstein 2001
PEPSI, YSL, JUSTIN, CENTURY 21, and the polo player emblem are examples of trademarks that immediately bring to mind specific products and services. Their use by anyone other than the owner could result in a trademark infringement lawsuit.
When the same or similar mark is used by different businesses to identify the products or services they offer, there is a good chance confusion will occur especially if those products are the same or competitive. This can happen when persons to whom the products are directed inadvertently buy one in the belief it originates from a source other than the business that produced it. For instance, if WALRION is used by two unrelated businesses in connection with the flooring each offers and one of the uses heavily advertises its flooring, there is a good chance many people will buy WALRION flooring made by the other user in the belief it is made by the advertiser. Advertising and publicity efforts by one user may unintentionally benefit or damage the business of the other. Similarly, if a poor reputation becomes associated with one person's mark due to the quality of its products or services (or for other reasons) that reputation may automatically attach to all users of the same or similar mark.
Justin Industries, Inc. found this to be the case with respect to its mark JUSTIN for leather boots. Someone else subsequently adopted and used JUSTIN LTD for women's sportswear. Justin Industries objected contending that use of the mark would lead consumers and others to believe the products of the parties to be legitimately connected with, sponsored by or approved by Justin Industries. The court sustained this position. It said that confusion would be likely.
This situation could have been avoided if before using JUSTIN LTD the later user first determined whether there might be potential conflicts associated with its use. A trademark search should be an integral part of considering whether to use a mark. A search involves checking United States Patent and Trademark Office records, state trademark files, and sources of information about unregistered marks. This process is followed to learn whether anyone may possess legal rights in the mark searched or one like it.
If a search was conducted and disclosed use of JUSTIN for clothing products, it would have been prudent to reconsider use of JUSTIN LTD. Typically, this would involve balancing the risk of being successfully challenged and the loss of time, effort, and money to promote products identified by it against perceived benefits in using it.
It is foolish to adopt and use a mark without first conducting a trademark search. In comparison to other expenses in launching a new product, the costs for a search and risk evaluation opinion are relatively small. Timewise, search results can be available in one day. When measuring the money spent for and value of a search against potential losses associated with defending an infringement claim or changing to a different mark, it makes no sense to forgo a trademark search.
Copyright David A. Weinstein 2001
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