So, startups and entrepreneurs, you think your trademark situation is totally cool because you conducted a full trademark search, right?  Wrong.  Well, at least not necessarily…

Sometimes even a full trademark search isn’t enough because it often doesn’t reveal important details about the actual use of a trademark in the marketplace.  In order to assess the likelihood of confusion and the level of risk associated with a third party’s trademark that may potentially conflict with yours, you should determine the nature and extent of any potentially conflicting trademark’s use. 

“Likelihood of confusion” is the crucial test in trademark infringement and unfair competition claims.  Although there is some variation among our circuit courts of appeal, there are similar factors that are generally considered when assessing the likelihood of confusion with a potentially conflicting third-party trademark.

Some important factors to assess with regard to a potentially conflicting mark’s use are:

• The length of time the third party mark has been in use
• The goods or services for which the mark is used
• The representative consumer of the good or service
• The price point of the good or service

Finally, one other important factor to assess is the third party’s history of trademark enforcement—If the third party has a history of active litigation regarding trademark infringement or unfair competition, you may really want to think twice before pursuing a mark that could potentially conflict or be confused with that mark.

Because basic internet searches may not be sufficient to determine the information needed to fully assess the use of a third party’s mark, it may be advisable to engage a trademark investigator to do the job—those do exist.