You are a paralegal in a large law firm. Mike German, a 30-something technology billionaire, entrepreneur and venture capitalist, has contacted Amber Sundquist, the lead trademark partner at your firm, about prospects for protecting the trade name of a new food and beverage business in which he has is the majority shareholder. The name of the company is “Glorious Pumpkin Food and Beverage Co.”

Glorious Pumpkin Food and Beverage Co. is a new food and beverage start-up company that will sell, market and distribute food in the nature of common snacks, craft beers, whiskeys and modestly priced red and white wines. (Thanks to Mr. German’s capitalization of the company, Glorious Pumpkin Food and Beverage Co. has recently bought a whiskey distillery in Tennessee, three wineries in Sonoma, California and a small brewery in Vermont.) In addition, since they plan on becoming a famous food product, Glorious Pumpkin also plans to produce t-shirts, baseball caps, and boxer shirts bearing the name of its brand. The company plans on selling its products at its own stores throughout the country and online.

Mr. German would like to file an intent to use trademark application under Section 1(b) of the Lanham Act the company’s “house mark,” “GLORIOUS PUMPKIN.” (Mr. German has told Amber that the company has plans for a roll out of its products in six months.) The mark will be a word mark alone, without a design element.

Mr. German would like to file an application to register the mark “GLORIOUS PUMPKIN” for the following goods:

CLASS 21: Beer mugs; whiskey glasses; beverage glassware

CLASS 25: baseball caps; short-sleeved t-shirts; long-sleeved t-shirts; boxer shorts

CLASS 30: crackers; pretzels; cookies; biscuits

CLASS 32: Beer; flavored beers; craft beers; malt extracts for making beer; hop extracts for making beer CLASS 33: Whiskey.

Amber has advised Mr. German that, in order to ensure that the mark is available for use and to protect the company from (a) filing a futile application due to the presence of an identical or similar prior mark on the register; and (b) the potential for liability for trademark infringement, Mr. German should instruct the firm to undertake a trademark availability search. Mr. German agreed, and Amber then instructed YOU to do the search and prepare a simple search report of no more than 7 pages, double spaced with charts [though you can put charts in an appendix thereto].

HOW TO DO THE SEARCH AND WRITE THE SEARCH REPORT

Conducting Your Search:

Your first step is to search the US trademark register. The best way to do that is to search the USPTO trademark database, or as it’s called, the TESS system: http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4806:i0km8v.1.1

You can use the “basic word mark search” tab, which will give you a search term box, and will ask you to choose a field of “LIVE AND DEAD,” “LIVE” or “DEAD”. I would choose “LIVE AND DEAD” first, then narrow to “LIVE” if you get too many hits. (Remember, you are searching for active marks on the register, not ones abandoned for non-use.

When searching, I would first put the entire mark within quotation marks. If you get no hits, that’s good! That means there’s probably no identical mark on the register or in the application tram. But you’re job isn’t done. I would put each word of the mark in quotes, and then see how many hits you get.

Then, once you’ve done with the “basic word mark search,” I would then go to the “structured search” tab, because one of the words in Mr. German’s mark is a very commonly-used word for a product found in nature. So it’s probable you will find a lot of marks that employ that word. The structured search will narrow things for you. (But bear in mind, the Structured Search will give you both live and dead marks, so focus on the live ones.)

When using the “Structured Search” tab, I would put these as my search parameters:

FIRST SEARCH TERM: “GLORIOUS”

FIRST SEARCH FIELD: “Non-Punctuated Word Mark”

OPERATOR: “AND” (not ‘or’; that will give you lots of hits most likely)

SECOND SEARCH TERM: [The number for AT LEAST each international class for which the mark is to be applied; for example, “025” for Class 25, “032” for Class 32 and so on]

SECOND SEARH FIELD: “International Class”

Once you’ve gotten your search results, then for each live mark, click the link on the serial number. Then look at the mark information that’s given to you. Particularly, look at the way the mark is presented. (Is it a plain word mark? Is it stylized? Does it have a design element?)

Then look at the goods and services for which the mark is protected. If, in your judgment, Mr. German’s mark and proposed goods are dissimilar to the prior mark you are looking at, then go on to the next one.

Err on the side of similarity. If there is some doubt in your mind, but also use your average person common sense and think about whether there would be likely confusion in the marketplace.

Factors to look out for would be:

(1) identical goods;

(2) a prior mark that is wholly subsumed by “Glorious Pumpkin.

Also be mindful that the same mark you are looking at could be registered or applied-for in multiple classes, so don’t duplicate your work.

For the prior marks for which you think there is a high degree of similarity of marks and goods with “Glorious Pumpkin,” on the face of things (i.e. after an informal analysis), you should analyze and compare each prior mark to “Glorious Pumpkin” from the perspective of the DuPont factors, In re Application of E.I. DuPont de Nemours Co., 476 F.2d 1357 (CCPA 1973).

Specifically, focus your analysis on Factors 1, 2 and 3 (similarity of marks; similarity of goods/services; similarity of trade channels).

After you have completed your USPTO database (i.e. TESS) search, you are not yet done. Then do a simple “Google” search for the trademark “Glorious Pumpkin” or similar permutations. This guards against liability from unregistered users of the mark. Then, when all your searching is done, start drafting your search report.

THE SEARCH REPORT

You should draft your report first with an introduction detailing your search method, i.e. describing how you searched for conflicting marks. Also you should address whether there were any identical marks, and, if not, the number of potential marks for each search term result you received. Then talk about how you narrowed the search.

After you describe your search methodology, you should analyze the most 5-10 prior marks presenting the most risk of likelihood of confusion, again, focusing on the DuPont factors. How are the marks similar? Would the average owner focus on the first or last word of the mark? Is there a design element? Are the goods similar? Are they even in the same class? Would these purchases, in your view, require a high degree of consumer care and sophistication or not? What do you think the conditions in the marketplace are with respect to “Glorious Pumpkin” and the mark you’re analyzing?

Answer rating: 100% (QA)

After your analysis then conclude with your opinion as to whether there is a likelihood of confusion ... View the full answer