Trademark Screening

Although strategic alignment and creative vitality are key to name development, at the end of the day, names must be available for use. Catchword’s expert preliminary search process ensures the greatest chance of success when name candidates undergo full trademark search. After all, there’s only one thing worse than finding out that the name you just fell in love with means “Your sister is a bag of hammers” in Samoan. And that’s finding out that it doesn’t—but you can’t legally own it.

Before recommending names, our search team screens them in the appropriate combination of USPTO, Google, and country and industry-specific databases—determined in discussion with your corporate counsel. (If you don’t have a good trademark attorney, we’re happy to recommend one.) If domain availability is required, we’ll also screen for .com availability and provide an opinion on purchasability.

Our extensive research allows us to present names that are much more likely to clear your counsel’s full trademark search. It also weeds out names that, while not legally infringing, raise marketing concerns because they might recall a competitor’s name (or a porn site, or a startup that went down in flames). Think of our trademark team as your attorney’s new BFF.

 

Trademark Services – Frequently Asked Questions (FAQ)

 

Are you trademark attorneys?

We are not trademark attorneys, and Catchword is not a law firm. For a formal legal opinion or to conduct a full trademark search, please consult an intellectual property attorney. We can refer you to one of our excellent partners.

With that said, since opening our doors in 1998, we have conducted literally tens of thousands of trademark prescreens, and have a strong understanding of the principles that guide an assessment of trademark risk.

What types of trademark screening do you do?

Catchword provides domestic and international trademark prescreening (the exact screening conducted will depend on the scope and geographical markets of a given project). Distinct from a full trademark evaluation—which your attorney will need to do on your final shortlist of names—a prescreen, sometimes referred to as a “knockout” screen, is a cursory review intended to eliminate names with more obvious legal conflicts. It includes a review of relevant trademark classes and jurisdictions, as well as Google screening to uncover common-law (unregistered) uses of a name, which can still be problematic.

What is the difference between a trademark prescreen and a full search?

A trademark prescreen is a preliminary evaluation, typically conducted on a longer list of name candidates and intended to eliminate those with more obvious legal conflicts. A full search is a deeper, more extensive evaluation of both registered trademarks and common-law (unregistered) uses. Typically, a full search involves examining not just exact and near-exact hits, but permutations, phonetic equivalents, and other name variations in order to come to a more informed opinion about the availability of a name as a trademark.

Full searches take time and can cost thousands of dollars, depending on the number of trademark classes and jurisdictions, and so are typically carried out on just a few names. Preliminary screens can be conducted on a hundred or more names to quickly and inexpensively hone a list to the more viable candidates.

What is included in a preliminary trademark screen?

We typically start with a review of existing registered marks in designated trademark classes, including their descriptions of goods and services, application and registration dates, history of opposition to new registrations, and more.

We may also conduct Google screening to uncover common-law (unregistered) uses. Many countries, including the United States, are first-use countries, meaning business owners obtain rights to names by using them in commerce. Google screens can help identify these unregistered but still potentially problematic uses.

Finally—and particularly important for new company names—we may review domain names and social handles to assess names for availability as dot-coms and within each of the major social platforms.

Do you do international trademark prescreening?

Yes! There is almost no country in the world in which we can’t prescreen names. Our licensed trademark screening platform allows us to review names in more than 200 countries.

How many names do you usually screen?

Frankly, the more the better. Most trademark classes are incredibly crowded, and the challenge of finding distinctive, available names grows each year. In 2018 alone, over 800,000 trademarks were registered by U.S. companies.

When considering names for prescreening, it’s best to think inclusively, knowing that many names will fall out. Our recommendation is to submit at least 15 names to a trademark prescreen, and for global companies in crowded categories, the number should be upwards of a hundred.

What is the difference between a trademark and a domain name?

A trademark is a unique word, phrase, design, or symbol that represents the source of goods or services. Companies spend a lot of resources building a brand, and the trademark is designed to protect it. When you see ™ after a name, it means the owner is asserting trademark rights in the name under common law. If you see the registered trademark symbol ®, it usually means they have registered their mark with the US Patent and Trademark Office (visit USPTO.gov for much more information) or another national or international Trademark Office. Roughly speaking, newcomers to a marketspace must choose a name or symbol that is different enough from existing marks that potential customers won’t be confused. By the same token, two brands in entirely different markets often may use the same brand with no likelihood of confusion (think Dove soap and Dove chocolate, or the Explorer SUV and the Explorer browser). In general, the more distinctive the name, the stronger and more legally protectable the mark.

A domain name is your unique website name, your URL (web address). Your domain name can comprise your exact brand name (washingtonpost.com), your name plus a descriptor (catchwordbranding.com), an abbreviation of your name (nytimes.com), or something else entirely (Google’s parent company Alphabet uses abc.xyz).

Registering a trademark doesn’t give you the domain name, and registering a domain name doesn’t give you the trademark.

Can you help me register my name as a trademark?

Catchword is not a law firm, but we have excellent IP partners who can assist you in conducting a full trademark search and registering your mark. Our trademark partners will help you assess trademark risk and registrability, craft a description of goods and services, determine appropriate classes for registration, and submit your application for trademark registration.

Do I need to hire an attorney to trademark my name? Can you refer me to a trademark attorney?

Trademark law is complex and unintuitive. We do not recommend trying it yourself, and neither does the USPTO. You should consult with an experienced trademark attorney to conduct a full trademark search and evaluation, and to help you complete your application for registration. We have a list of seasoned trademark attorneys we can recommend.

How long does it take to obtain registration for a trademark?

Typically, the United States Trademark Office (USPTO) reviews trademark applications within 2 to 6 months of the filing. If the applicant has used the mark before filing in the US or the applicant is filing on the basis of a foreign priority registration, the USPTO might issue the registration within 6 months. If there are problems with the application or the applicant needs to demonstrate use of the mark in federally regulated commerce, it might take a year or more to obtain the registration.

International applications filed through the Madrid Protocol are typically substantively examined within 2 months of filing the application. However, each national trademark office must review the application. It can take anywhere from 6 to 18 months for the national offices to provide a substantive opinion. For applications filed directly with national trademark offices, each office has different procedures and different timelines, with some taking months to approve an application and others taking years.

How much does it cost to register a trademark for a name?

If you use an attorney (which Catchword and the USPTO recommend), it can cost from hundreds to many thousands of dollars, depending on the classes and jurisdictions. Some trademark attorneys charge a flat fee of less than $1,000 for filing a US application, but typically these flat-fee providers will charge additional fees to obtain the registration if the USPTO finds problems with the application that cannot be fixed easily. Also note that if you need to expedite the process or negotiate with an existing trademark holder, you should expect to pay more.

Think of your trademark attorney fee as insurance against a trademark infringement lawsuit or complete rename, both of which will cost you far more. Advance planning, research, and flexibility around name selection—try not to fall in love with just one name—will help keep costs down.