Thursday, July 11, 2013

Wants to Use Initials as Trademark

Dear Rich: I would like to use the initials of my proper name as the name of my business followed by an exclamation point. There are other businesses out there with those initials. Do I need to worry that someone has trademarked them and will order me to change the name? Do you mean by "trademarked them," that someone has registered the initials with the USPTO as a trademark? If so, you can easily check whether that is the case using the USPTO database, explained below (BTW, it's best not to use "trademark" as a verb.)
Searching for initials. To check whether someone has registered your initials, visit the USPTO trademark page and choose "Search Trademarks." Then click "Basic Word Mark Search" and type in the initials. (We have an article and video that explains how to perform a search). Always keep in mind that you're primarily concerned about someone using the same initials for similar goods or services. Federal registration isn't essential for enforcing trademark rights but it's a decent indicator as to whether you will run into a problem
Chances are ... It's very possible that the other businesses using similar initials haven't registered  them with the USPTO. That's because it's often tricky to acquire registration for initials because you must be able to demonstrate that consumers associate those initials with your goods or services. That's not so hard for famous initials like CBS or AOL but it can get much more difficult when the initials are based on a surname or a generic term  For example, it's not possible to register "Brandy & Benedictine" because that's the generic term for an alcoholic beverage containing brandy and benedictine. Similarly, B &B cannot be registered if consumers associate that term with Brandy and Benedictine. In other words, if the initials are just a placeholder for a generic or descriptive term, the USPTO will treat the initials as being generic or descriptive as well. So if an applicant is using initials for his or her name, the examiner may start with the presumption that the mark is descriptive. (If you're looking for a more in-depth explanation on initials and trademarks, check out this law review article.)