Managing Trademark Risk:

By Stuart M. Rees, Esq.

Cartoonists frequently ask me if their strip’s title is “okay” from a trademark standpoint. Although seemingly simple, the question is complex and can only be answered in terms of degrees of certainty: low, medium, and high. Any lawyer who declares that a proposed trademark is "definitely okay" probably isn’t a trademark specialist.

The uncertainty in trademark law comes from two sources. First, it’s impossible to be 100% sure that you have discovered all similar trademarks owned by other people. Second, every trademark comparison is done on a case-by-case basis using a combination of common sense logic and hundreds of potentially relevant trademark rules.

Perhaps the best way to convey the inherent uncertainty of trademark law is to note that malpractice insurance premiums are very high for trademark lawyers, and some insurance carriers refuse to offer any trademark coverage whatsoever. If an expert attorney can’t be sure, nobody can. Therefore, you should think in terms of managing risk rather than eliminating it.

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This self-help article provides some basic resources you can use when selecting your feature's title. Also, when tough issues do arise, you will be able to make more efficient use of your trademark attorney.

Editor’s Note: Stuart Rees, J.D. Harvard Law School, with over 130 cartoonist clients, is the comic strip industry’s legal expert. CARTOONIST PROfiles is pleased to announce that Stu will be regularly contributing legal self-help articles to future editions. Those of you wishing to contact Stu directly can reach him at stu@stus.com or (619) 297-4001.

Infringement: The Two-Part Test

The legal test for trademark infringement is whether there is a "likelihood of confusion" in customers’ minds. The two-part test for evaluating the "likelihood of confusion" is (1) whether the two trademarks have a similar "sight, sound, or meaning" and (2) whether there is a similarity between the goods or their marketing channels. A very strong similarity in one part of the test can offset a weak similarity in the other part.

(1) The "sight, sound, or meaning" part of the test is largely a common sense determination. For example, it doesn’t take a trademark lawyer to realize that THE FAR SIDE is similar in sight, sound or meaning to THE FARRR SIDE, THE FAR SIDES, FAR SIDE, THE PHAR SIDE, and THE DISTANT SIDE.

Of course, there are hundreds of rules and guidelines governing close cases. For example, non-English words are translated and then compared for "meaning" similarity. Also, words and images are legally similar to each other if they would have the same meaning to a customer. For example, THE LION KING is similar to THE [image of a lion] KING. Another particularly common source of dispute concerns phonetically similar trademarks, such as "Crazy Cat" and "Krazy Kat."

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An effective way to simultaneously create strong trademark protection for you and avoid most “sight, sound, or meaning” conflicts is to invent a new word. For example, Gary Trudeau coined “Doonesbury” by combining the obscure slang term “doone” and the end of the name “Pillsbury.”

(2) Once you discover a potential conflict based on trademark similarity, you must proceed to the second step of the trademark infringement test: are the goods or marketing channels similar? For example, THE FAR SIDE adventure travel agency could probably coexist peacefully with the comic strip since it provides a different product and would be marketed through different channels. However, a syndicated text column on international travel titled THE DISTANT SIDE would present a very close call. It is this type of close case that can generate an ugly and prolonged trademark fight.

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If you think you might have a close call, ask your trademark lawyer or pick a different title that is not in the gray area.

How to Do a "Knock-Out" Search

A "knock-out" search is used to determine if there are any obvious trademark conflicts. Put simply, when choosing your title you should search the free internet resources described below and apply the two-part test described above to any possible trademark conflicts. In some cases, it may take just a few minutes to "knock out" a potential title from consideration.

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Because such a large percentage of all commerce, news, government information, and academic research is now online, the quickest and cheapest way to check for potentially conflicting trademarks is via internet search engines. Unfortunately, the overlap among the databases of these engines is low, so you’ll have to search several in order to cover a respectable percentage of the information on the internet. I recommend searching EACH of the following engines in their given order, plus any other engines you are already comfortable using.

www.google.com/advanced_search
www.northernlight.com
www.webcrawler.com
www.metor.com

Though it may seem a bit tedious to search all of these engines, remember that a single missed result could spawn a painful trademark fight later.

The following table lists common search terms available on each of the above search engines. Some engines, such as the Google.com advanced search engine, provide user-friendly, plain-language interfaces. (NOTE: Google.com has dropped use of the * and % functions).

When using search engines not listed above, be very careful to identify which search terms are supported. For more on search terms, see searchenginewatch.com/resources/tutorials.html.

Search Term	Description
" "	Results must have the exact phrase. Ex., “Fox Trot”
+	Results must have the word after the plus sign. Ex., Fox +Trot Note: the plus sign must touch the word.
-	Results must not contain the word after the minus sign. Ex., FoxTrot -dance Note: the minus sign MUST touch the word.
( )	Parantheses allow you to construct complex queries. Ex., *(FoxTrot +Amend) -danc -shoes**
*	Replaces any number of characters in a word, Ex., Cartoon* will return Cartoonist, Cartoonists, Cartooning, Cartoon, Cartoons, etc.
%	Replaces a single letter. Ex., Cartoon% returns Cartoons and Cartoon

You should run many types of searches, and not unduly narrow your results. For example, FoxTrot is a comic strip. It is also a very popular dance. It is quite possible that a line of dance clothing could be called “Foxtrot,” which might present problems for certain uses of the comic strip title on T-shirts.

Official Trademark Database

The second destination of your knock-out search should be the official database of the U.S. Patent and Trademark Office ("PTO"), which is at www.uspto.gov/web/menu/tm.html. Click on the text "Trademark Electronic Search System (TESS)" at the top of the left hand column. Select "Basic Search" from the options menu.

The PTO database contains only federal trademark registrations, registration applications, and dead trademark registrations. Therefore, the database is small in comparison to an internet search engine. This means that you can often use broader terms to define your search. For example, rather than search for "Fox Trot" you could search for just "Fox" or just "Trot." A "Fox" search returns 1399 records. That’s way too many to wade through. A search for "Trot," on the other hand, returns only 39 records.

Another key search technique is to break words apart in logical places. For example, a search for "Foxtrot" returns seven records. On the other hand, a search for "Fox Trot" returns eight records, including the actual registration for the comic strip. The lesson here is to try every reasonable permutation. After all, if you’d only searched for "Foxtrot," you would have missed the registration.

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One helpful quality of the PTO database is that all goods and services are placed in one or more of 42 "international classes." The important international class categories for registering comic strips are:

016: Paper Goods and Printed Matter (comic strips, comic books, books, magazines, etc.)

025: Clothes

028: Toys and Sporting Goods

009: Electrical and Scientific Apparatus (software, hardware, peripherals, etc.)

021: Housewares and Glass (coffee mugs, etc.)

See www.naming.com/icclasses.html for a complete list of international classes.

Since these are the most likely markets for comic strips, you should pay particular attention to potential conflicts with trademarks registered in these classes.

(Note that the “dead” designation in the database merely means that the registration or registration application has lapsed. The owner could still be using the trademark and would therefore own the lesser rights provided by an unregistered trademark.)

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Applying the Two-Part Test

Once you’ve conducted your search and have a list of potential conflicts, you need to evaluate the "likelihood of confusion" using the above-mentioned two-part test: (1) how close are the trademarks and (2) how close are their goods or marketing channels. A "Foxtrot" search reveals that there is a data entry software product named "Foxtrot." The only visual difference between the software trademark and the comic strip trademark is that the comic strip has a space between the two words. Consequently, from a legal standpoint as well as from a common sense view, the trademarks are very similar. However, under the second part of the test, the trademarks can easily coexist because they relate to such different products.

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Fee-Based Trademark Searches

Companies such as Sc[i]3 (www.sci3.com), NameProtect.com (www.nameprotect.com), and Thomson & Thomson (www.thomson-thomson.com) do search reports for $100-$400. The industry leader is Thomson & Thomson, and it charges near the upper end of the scale.

The biggest advantages to professional search reports are that a trained person conducts the search and their software identifies variations that you might miss, such as phonetic equivalents, image equivalents, meaning equivalents, etc. It is often deemed malpractice for an attorney not to strenuously recommend that a client commission a search report prior to committing to a trademark.

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The unfortunate reality for most cartoonists is that a search report is cost prohibitive since the report and an attorney’s analysis of the report are EACH likely to run $400.

In my experience, many cartoonists who are already using an unregistered trademark skip the official search report if a knock-out search comes up clean. For these artists, it’s cheaper to pay the $325 filing fee and run the risk of being refused the registration than it is to commission a professional search.

Final Thoughts

The goal of this article is to provide some easy and inexpensive ways to manage trademark risk through a knock-out search. The key problems with a "do-it-yourself" knock-out search are that it (1) is of limited databases and (2) will frequently miss similar trademarks that professional trademark researchers would find. Also, there are a number of judgment calls about the "likelihood of confusion" that only a trademark lawyer can make. Therefore, if you are at all in doubt after your knock-out search, you need to either ask your trademark lawyer or pick a different title.

Additional Education

For further information on trademarks, visit Nolo Press (www.nolo.com) and Allworth Press (www.allworth.com). Nolo offers some free information online and both companies are self-help publishers with a number of good trademark books. If you need a more specialized book, try searching Amazon.com.

The information in this article is not, nor is it intended to be, legal advice. You should consult an attorney for individual advice regarding your own situation. In addition, neither the exchange of information nor the response to an e-mail or other communication establishes any attorney-client relationship.

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