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Trademark Searches and Availability Opinions

Branding of products and services is the key to success for almost any medical device company. For example, the NexGen® Knee by Zimmer, Rapid Recovery® Services offered by Biomet and the X-Stop® IPD® System owned by Kyphon are all well-recognized brand names in the orthopaedic marketplace. If the brand name is used in connection with the sale of products or other goods, it is called a trademark. If the brand name is used for identifying the sale of services, then it would be called a service mark. For the purpose of this article, I will refer collectively to these two types of marks as a “trademark.”

Trademarks are defined as a word, phrase, symbol, color or design that is used to identify the source of certain products or services and distinguish them from similar kinds of products or services sold by other companies. The main purpose of trademarks is to provide consumers with identifying information as to the source of the products or services that they are purchasing. Most people will attach various degrees of expectations as to quality and price of the products or services depending upon the trademark that is associated with that product or service. As an example, think BMW brand cars compared to Hyundai brand cars; which cost more and are of a perceived higher quality? Because of this association, brand names play a key role in people’s purchasing decision. Thus, it is critical that the trademarks for one company are not confusingly similar to those of another company, especially if they are competitors in the same marketplace.

To avoid falling into the “confusing similar” trap and jeopardizing investments made in building brand recognition, a company should always investigate the proposed trademark to determine if it is available for use and ultimately, if it can be registered with the U.S. Patent and Trademark Office (USPTO). How does one actually “investigate” possible trademark candidates? The best way is to first perform a search on the mark. Such searches vary depending upon the allocated budget and desired scope.

The degree of risk tolerance of a company will determine the extensiveness of the search that will be conducted on the proposed trademark. If the company has a high tolerance, then a low cost, commonly called “knock-out” search may be conducted. This is usually done by using the USPTO’s free searchable TESS (Trademark Electronic Search System) database. The TESS system allows the user free access to the records of Federally-registered trademarks or pending trademark applications. The user typically will search the exact words or designs that comprise the proposed trademark, including similar-sounding words. The knockout search will usually identify identical marks that are used for the same or highly-related products or services that would ban the use or registration of the proposed mark. Importantly, the scope of this preliminary search is limited only to marks that have been Federally registered or have a pending application that is making its way through the USPTO registration process.

Again, depending upon internal risk tolerance and budget considerations, companies may run their own in-house knock-out search first and commission a second, more extensive search. Alternatively, a company may skip the knock-out search and move directly to the costly comprehensive trademark search. A comprehensive or full trademark search is usually conducted by specialized third party trademark search companies. These companies typically have access to proprietary databases that allow them to search a wide variety of public domain areas. This expansive search is necessary, as trademark rights in the U.S. are granted on use because Federal registration is not required for common law rights to exist in a trademark.

The scope of a full search will likely include all Federal and state trademark registration databases. Even though pending registration applications and abandoned registrations provide no Federal rights to the owner of these trademarks, if the mark is still in use, it may not be available to others. Additionally, it is very important to search for common law (non-registered) trademarks, because of the prior use obstacle. Databases that list product names, press releases, internet domain name registrations, phone books, corporate information and web search results must be reviewed. It is important to remember that even full or comprehensive trademark searches are not perfect due to reliance upon constantly changing databases. It is very possible that trademark rights may have been established between the last time the database was updated and the time the company waiting to use the trademark either starts using it or applies for registration.


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