Deck 3: Trademark Selection and Searching

Question 1

A client wishes to use CLARA'S CHICKEN COOP for restaurant services. A search discloses registrations for CHRIS'S CHICKEN HUTCH and CLARK'S CHICKEN HOUSE, both for restaurant services. Discuss whether you think these two registrations might "block" an application for CLARA'S CHICKEN COOP.

Answer 1

The two registrations likely would not block an application for CLARA'S CHICKEN COOP. The meanings of "Chicken Hutch" and "Chicken House" are nearly synonymous with "Chicken Coop" and the two registrations are weak when used in connection with restaurant services as they are either suggestive of such services or possibly descriptive of such services. When numerous similar marks coexist, consumers become adept at distinguishing among the marks. In this case, consumers could likely distinguish among the names "Clara," "Chris," and "Clark." If the two registrations can coexist with each other, there should be room for CLARA'S CHICKEN COOP. ​

Question 2

Law firms can predict with near certainty that a trademark application will be successful at the USPTO.

Answer 2

False

Question 3

Briefly describe the two types of trademark searches conducted before an application is filed with the USPTO.

Answer 3

Applicants typically perform a preliminary or "knockout" search to determine if there is a mark that directly conflicts with the desired mark. If there is no such direct conflict, applicants then perform a full or comprehensive search that reviews USPTO records, state records, and Internet usages to ensure that no infringement will occur. ​

Question 4

If a search discloses a cancelled registration for a conflicting mark, why should this cancelled mark be investigated?

Question 5

​ What is the effect in a later infringement action of a failure to conduct a trademark search?

Question 6

Paralegals can sign a letter to a client analyzing the results of a trademark search and recommending options for a client.

Question 7

If a trademark search by a potential trademark applicant discloses a possibly conflicting mark, what avenues can be followed by the potential applicant?

Question 8

If ABC Inc. intends to use a mark for a two-week back-to-school sale, what type of search should be conducted? Discuss.

Question 9

The U.S. Trademark Act requires that trademark applicants perform a trademark search before applying for federal registration for a mark.

Question 10

A trademark search will uncover every possibly conflicting mark.

Question 11

​ Paralegals often conduct preliminary trademark searches.

Question 12

A trademark search can provide information as to how the USPTO handled and reviewed trademark applications for marks similar to that being searched.

Question 13

Why do most trademark professionals use the services of professional search firms?

Question 14

​Every trademark search should cover not only all U.S. sources but international sources as well.

Question 15

​One may use the USPTO databases to determine if a mark has been the subject of proceedings at the Trademark Trial and Appeal Board.

Question 16

​ What does it mean to say that a field is "crowded" with marks?