The availability of a name depends on whether the identical or a confusingly similar name has already been registered. Or, in some jurisdictions, used by another party on the same or similar products. It is therefore necessary, before adopting a name, to conduct thorough research to determine what marks have already been registered or used in the markets of interest in relation to similar goods where there might be problems that you have to contend with later on.
Your trademark adviser can conduct these searches and any subsequent investigations which may be necessary. If carried out on an international scope, such searches can be both expensive and time consuming. They should not, however, be avoided because to do so would mean jeopardizing the whole project.
To determine whether a mark is available for example in the USA, counsel will conduct a search of the records of the Patent and Trademark Office, trade directories, state trademark registers, phone books, and other similar sources. A professional search company with an established library containing such information will almost always be an engaged counsel to conduct the search. The final determination as to whether the mark is available. However, it is the legal conclusion that should be made only by an experienced trademark counsel.
In reviewing a search report and prior to rendering an opinion on availability, counsel will look at a number of factors:
The nature of the goods or services in question. The counsel has a list on what business category your business will fall on. For example, if you run a printing business, offering folders, custom folder printing, business cards, business cards printing and so on, your counsel will look on the marks used by similar businesses.
Their relationship to the goods and services covered by the potentially conflicting mark. For instance, you wont be creating fashion trademarks for your folder printing service, right? Or a car trademark when your business are in line with shoes or apparels.
The similarity of the marks in sight, sound or meaning. This is very significant as your company identity is at stake here. You wont like to have similar trademarks with your competitors. What you would want instead is uniqueness, which is the whole point of getting a trademark in the first place.
The exclusivity of the cited mark, the inherent strength of the cited mark, whether a potentially confused mark cited in the search report is, in fact, in use, and any history of prior litigation concerning the proposed mark are some other factors being looked upon by the counsel.
As a rule of thumb, if the goods are identical and the marks are identical or very similar, the counsel will in all probability reject the proposed mark. On the other hand, where the goods are unrelated and the marks are distinguishable, the counsel will generally approve the mark. Where the goods appear unrelated, but the marks are similar, the counsel must determine whether the co-existence of the proposed mark and the prior mark could result in confusion as to the source of origin of the goods. Additionally, the counsel must also consider whether the mark itself is weak or strong with regards to creating a brand identity that would be recognized and remembered by your target market.
A strong mark would be entitled to more deference than a weak one. Distinctive marks like Xerox, Kodak, and Exxon, for example, enjoy a much wider zone of protection than suggestive or descriptive marks such as Compu-max, Teltronic, or Supa-Sava.
Searching for a trademark is not that difficult but you will surely encounter problems on legal matters regarding similarity with other businesses. List some choices first, and then have your counsel review them from the list of the Patent and Trademark Office before you finally decide on your trademark.