Branding & Trademark Project 1, Part 3: basic knock-out searching

Background. 

In this portion of the project, you will engage in preliminary “knockout” searching to see if there are any clear impediments to your client’s registration and use of the chosen mark. A knock-out search is not intended as “clearance” to registration and use, but is rather a limited search for clear impediments that “knock out” either registration or use. (That means that a planned mark might be knocked out by something in the USPTO or elsewhere, such as a state registration or common-law use.)

In the real world, a knock-out search that reveals no clear obstacles is regularly followed up with a far more in-depth “full” search that uses the assistance of a professional search firm, which puts together an extensive report from many databases, including federal and state registrations, business names, common-law uses, domain names, internet uses, and more. Searches can include international marks as well, and there are even ways of searching logos and other designs that I may briefly touch upon in class. Even though a “full” search is more geared towards potential clearance, even legal analysis of a full search report is oftentimes delivered with many caveats on its reach and limitations. Searching can also give rise to many ethical quandaries, which we will discuss in class.

After searching, you will likely find a number of potential impediments to your client’s use or registration. What is the test? When the USPTO examines an application, one of the key legal tests that it looks at is whether registration of the mark would create a “likelihood of confusion” with other registered marks. This requires consideration of a list of non-exclusive factors. As stated in the USPTO Trademark Manual of Examining Procedure (“TMEP”):

In the seminal case involving §2(d), In re E. I. du Pont de Nemours and Company, 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the U.S. Court of Customs and Patent Appeals, the predecessor court of the U.S. Court of Appeals for the Federal Circuit, discussed the factors relevant to a determination of likelihood of confusion. . . .

Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:

• • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in the application and registration(s).

The following factors may also be relevant in an ex parte likelihood-of-confusion determination and must be considered if there is pertinent evidence in the record:

• • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark.

TMEP § 1207.01 (citations omitted).

For this project, the most important factors are also likely to be the similarity of marks and similarity of goods or services, although your research and thinking may reveal other relevant considerations. We will study the likelihood of confusion (LOC) test and other tests in great detail later, and you will soon see that variations of this test are used by all Courts of Appeals in the infringement context as well. But for now, be aware of the LOC factors and consider them in writing the portions of your memo where you address the extent to which any of the marks you find may be an impediment to your client’s use or registration of their chosen mark.

To prepare for the training session:

• Watch this video with on basic knockout search training
• Carefully review the memo template, which contains guidance on what is expected from you regarding reporting of your search.
• Go to https://tess2.uspto.gov and play with the various search tools. Based on the video, start practicing using your client’s mark, classification(s), and intended goods or services.

Posted July 19, 2022; date updated 9/4/23