Generate Trademark Post-Research Opinion Letter

Trademark Post-Research Opinion Letter

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Client's Name*

First Last

Client's Email*

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Entity Name

Proposed Marke.g., whether the mark is in standard characters, a design mark, a product configuration, etc.

Date of Letter*

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Type of Goods/Servicesthe contemplated goods/services per the USPTO, intended geographical use, and any pertinent information regarding the mark’s meaning, such as whether it possesses any meaning in the relevant industry, as a geographic term, or is a surname. For example, if your client’s proposed mark is NE GREEN CLEANERS for dry cleaning services, relevant information might include: (1) the mark is meant to reference the name of your client’s nationwide chain of retail apparel stores, NE STYLE SHOP, and to indicate that its dry cleaning methods are environmentally friendly; and (2) the “NE” portion of the mark represents the first initials of Nina and Edward Jones (client’s founders), not the Northeast United States (even though client established its first NE STYLE SHOP in upstate New York)

Use Form of Mark

in standard characters

as stylized letters

as a design

as a sound or color

Classes of Goods Searched

Class of Goods (for reference)*

Purpose of the Mark as Described by Client*The lines prior say -- We understand that Client intends to use Proposed Mark to indicate the source for the following goods/services: So, please type the actual common terms the client used to describe the vision for the mark's use.

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Summary of AvailabilityThe summary of availability for use and/or registration should state that: (1) the mark is likely available; (2) the mark is potentially available but may face certain identified obstacles; (3) the mark is likely unavailable due to certain identified obstacles; or (4) you are not able to make a conclusion without further investigation, with an explanation of what that would entail. The detailed analysis and reasoning behind the availability conclusion is included later in the trademark opinion.

Summary of Availability

Summary of Availability*

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Federal Registration Findings

Mark

Class + Goods & Services

Status

Owner

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State Registration Findings

Mark

Class + Goods & Services

Status

State

Owner

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Common Law Findings

Mark

Class + Goods & Services

Owner

Location

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Domain Names/ Websites/ Social Media Findings

Domain Name

Website Content

Owner

Risk Level of Mark

Risk Types

First & Most Predominant Words are the Same + Same Goods/Services: When the attorneys at the USPTO examine a proposed mark, there is a 3-part analysis that generally takes place. During Step 1, the attorneys will look at the mark next to similar marks. The marks don't have to be exactly the same. The marks can simply sound alike, look alike, or have the same "commercial impression." For example, a brand cannot register a mark for a soda called KOKUH-COLA because (although this brand isn’t EXACT to Coca-Cola) it would be pronounced the same; thus, the two brands sound alike. Likewise, a brand cannot register a mark for a soda called BROKE-A-COLA because the "commercial impression" (or possibility that the average person would associate the brands with one another) is too risky for COCA-COLA. During Step 2, after examining whether the marks are "similar" in sound/appearance or commercial impression, the examining attorney will look at the listed goods/services on applications that are already in the USPTO system. When (1) the marks sound alike, look alike, or have similar commercial impression and (2) the goods and services provided by the companies are related or similar, it’s almost a guarantee that the USPTO will deny the trademark application. In this case, your proposed mark could easily be said to have the same commercial impression, and the goods/services are both entertainment and programming for the marks that we’ve highlighted in red on your search report. The problem with this analysis is that the USPTO cannot register a mark that is likely to cause confusion with an already registered mark.

First & Most Predominant Words are the Same with Closely Related Goods: We found marks during our search that presented a high risk. Each of these marks is highlighted in yellow within your Comprehensive Search Report. With each of these high-risk marks, the first and most predominant word on each mark, and your proposed mark are the same. If the Examining Attorney at the USPTO decides that your goods/services overlap with the marks we highlighted, then they will refuse registration. When deciding if the goods/services overlap, the goods/services don’t have to be exact. Instead, they can be within the same “wheelhouse.” For example, a mark that is registered for “mortgage lending” may also be said to overlap with a different trademark application with a similar name for “apartment leasing” because the wheelhouse of “putting people into homes” might also include helping them find an apartment if their mortgage application falls through. A second example would be where a company makes “shampoo and conditioner” but a competing application shows up in the USPTO database for “hair cream.” In such cases, the Examining Attorney has to decide: are these goods/services so closely related that the average customer would think, “Oh good, they’ve expanded to offering a new service/product.” As a result, we have to be very careful about how the goods/services are listed in your application. Or, we need to make adjustments to the mark itself.

Looks Good; File Right Away: We didn't find any marks during our search that we think would cause heightened concern. We have highlighted the ones that we need to be mindful of. They are highlighted in green on your Comprehensive Search Report. However, we highly recommend that you move forward with filing this mark as soon as possible.

Describe basis for risk assessmentThe search analysis should identify the most pertinent references from the full trademark search report, beginning with a discussion of the federal references. Explain why the cited references may or may not pose a significant risk to the client’s use and/or registration of the proposed mark and indicate whether and how the client can overcome such risk (e.g., by making alterations to the proposed mark or the proposed goods/services, or negotiating a co-existence agreement with the owner of a potentially blocking mark). If you conducted additional research into any of the references, the analysis section should also describe that investigation and the results. After giving a brief overview of the most pertinent federal registrations, state registrations, common law uses, and/or domain names, the opinion should conclude with an overall risk assessment of the client’s use and registration of the proposed mark. The conclusion should include an assessment of the potential risk in adopting the mark (i.e., low, moderate, high), with an explanation of the legal reasoning and citations to significant references from the search report. If applicable, you should also identify any additional investigation that needs to be conducted (see the first Optional Clause below). To give a basic example, if your client’s proposed mark is NE GREEN CLEANERS for dry cleaning services, you might conclude that moderate risk exists because a large number of entities use the term “green cleaners,” but that you believe your client could overcome any potential objections from such entities. Specifically, you might note that the term is highly descriptive of environmentally-friendly cleaning products and services and widely used by many entities to describe such products and services and, consequently, the phrase should be given a very narrow scope of protection. You might also recommend that your client use its stylized NE logo in the proposed mark, instead of the letters “NE” in standard characters, to lessen any potential confusion. [In this example, you would also have to counsel your client that if it obtained a registration for the proposed mark, its own scope of protection would be fairly narrow as well.]

Recommendations

Abandon the mark all together and explore an entirely new combination of words/ designs because the current mark will be denied by the USPTO more than likely. If you come up with another mark within the next 10 days, we will conduct a brand new search 100% free for you. After ten days have passed since the date of this letter, all new searches will be charged at the normal rate of $750 per mark.

Abandon the mark in the following classes:

Turn your mark into a compound word so that it no longer has the same first and predominant word as the marks that we highlighted red/yellow on your Comprehensive Search Report.

Adjust your goods and services to be more narrowly defined so that the Examining Attorney at the USPTO can clearly differentiate your product and your target market from the marks that we've highlighted red/yellow on your Comprehensive Search Report.

We need you to provide us with .jpg or .pdf files that show your mark being used in commerce. This can be a screencapture of a website, an invoice that includes a description of the goods/services and a display of the mark, a sales deck, a powerpoint presentation for investors, a media kit, a picture of your product with the mark on it, or any other proof that your mark is currently being used in connection with a good or service that you provide.

Provide Your Recommendations for Adjustments, if Any

Google Link to Comprehensive Search Report*