First Look™ Trademark Strategy

Attorney Michael Lasky explains structured trademark searching.

Contact Michael Lasky

Email: [email protected]

Phone: (404) 441-1750 or (952) 253-4106

Transcript:

The purpose of this video is to explain how we do trademarks here so you’ll understand the methodology behind it. The objective of trademark search is or are disaster avoidance; get it done fast, and at a reasonable cost. Disaster avoidance is the primary goal. Here’s the disaster, you get a trademark, you use a trademark, you market your products, your services, and five years into it, someone sues you for trademark infringement that’s a disaster.

Okay, speed is you’ve got to get this thing done fast, you want to go to market, and, of course, cost is always an issue. So how do we manage it? We have a special way of doing this it may make more sense to you once I explain it. The trademark system in the United States is a three-tiered system. There’s the federal registration system, which is the gold standard everybody wants that. There are 50 state registers of each state they’re pretty irrelevant, and then there’s these deadly common law that is unregistered users who have good trademark rights who could cause you untold grief. We have to find them all but the problem is how do we do that efficiently and quickly.

So what we do is we break the search down into two parts. We do what we call our first look search, which gets about 50 or 60 percent of the marks which are dead in the water, out of the picture. And we can do that in a much lower cost and we can do it quickly. Then we do a comprehensive search, which goes to 90-95 percent. So where’s that extra five percent? We can’t find some users because they are so well hidden and they will only come out of the woodwork when you’re successful but 95 percent is pretty close to diminishing returns.

So here’s an example; Chewy Vuiton, which was a mark that Louie Vuitton was very interested in that would have showed up on a first look each if they had filed through register. Great, we would have, you know if we were Chewy we would have knocked it out right away. Now let’s take this one, which is fictitious I made this one up. Here we have Purina Cat Chow and then we have a small operator whose selling Pure EENA Cat Food would that show up on a trademark search? Well, it wouldn’t show up in a federal search because it probably wasn’t filed upon so we would have issued it in the first look, we would catch it in the next level.

You will normally find that when we do the structured search of first look on a group of trademarks, we can cut out all the ones that are problematic and save all the cost of the comprehension search ’cause that is much more expensive and takes much more time. So we use the first look to do a cull of the bad ones and we get most of them but not all.

And then we do the comprehensive search, which looks everywhere. And this is not the internet this is the internet and hundreds of databases, 500 pages of the report is typically what we get. That’s how we get to the bottom line here.

So the real cost in a search, of course, is the search cost but you have to factor in the disaster cost you don’t want one, the costs are 10,000 times the cost of search, maybe a million times the cost of the search, it’s a bad outcome. So it makes sense to do a structured search where you can eliminate the problematic marks real quickly and cheaply and then go on to the serous stuff.

And here’s the kind of disasters you want to avoid. You do not want to buy a spot on the Super Bowl halftime for $4 million with the name Surge and two days before the Super Bowl another drink calls you up and says don’t show that spot we’re going to get an injunction. That actually happened.

How about this one, you have a fantastic trademark, Amazon.com. It is a strong trademark but something went wrong in your search because you didn’t catch that there was an unregistered common law user called the Amazon Bookstore that was shipping all over the United States and you didn’t know about them. They made a phone call to Jeff Bezos and said we love your trademark and we’re ready to take it back. This is not an outcome you want. You need a comprehensive search and the way to do it is in a structured way so that you can get to this at a reasonable cost.

So that’s how we do our trademark searching I hope that helps, please feel free to call if you have questions. Thank you.