Brand Protection in an AI-Driven World: Part 2 Clearing Your Mark
by: Rosanne Yang
In 2021, InfoLawGroup ran a multi-part series on brand protection, a vital part of a company’s operations no matter whether they have a portfolio of 1 or 1000+ marks. While the fundamentals have not changed, in the intervening years, AI has become an increasingly common tool in every step of brand protection - from ideation through registration and ultimately enforcement - and its impacts should be explored in the context of those fundamentals. We therefore are pleased to bring you an updated and expanded take on the fundamentals, new topics, and tips on the use of AI to facilitate your brand protection efforts.
Part 2: Clearing Your Mark
In Part 1 of our series, we explored key issues to consider when ideating your mark. Once you have come up with an idea (or several) for your mark, it is vital to make sure that whatever you ultimately select will not infringe the pre-existing rights of another user, that you will be able to register it as a mark if desired, and, if relevant, that it will be registerable as an entity name or dba/trading name. We call this process “clearance.”
1. Trademark Use & Registration.
When we look at whether a mark is available for use and registration, we are evaluating several factors. Knowing these ahead of time may help you design into a better mark and streamline your interactions with your attorney. The overall question is whether the proposed mark is close enough to another mark that the consumer is likely to be confused about the source or sponsorship of the products.
This analysis takes into account a number of factors, the most prominent ones being these:
Is the mark similar to another? “Similar” does not mean exact. For example, you cannot get around similarity by adopting a different spelling (e.g., substituting a “z” for an “s”) or adding an accent.
In fact, sometimes, similar meanings will create a risk of confusion even where the marks do not look or sound similar. For example, ITOWNS was denied registration by the US Patent and Trademark Office in light of a prior registration for IVILLAGE, both for newsletters/newspapers and related websites.
Are the products similar/related? It is possible for identical marks to exist for entirely different products. Consider DELTA, which is a trademark for both airline services and for faucets. No one is confused in that scenario. However, if one were to try to use DELTA for air travel accessories, that could be problematic because the goods are more likely to come from the same source, or be licensed (sponsored) by the same source.
How strong is the mark? As discussed in more detail in Part 1 of our series, there is a continuum of strengths. The weaker the marks, the closer 2 marks are allowed to get.
2. Business Names/Trading Names.
These are matters of state corporations laws. State governments may refuse to permit an identical name, even where the products are unrelated. If you intend to use your mark as the name of your entity, or need to register a trading name or obtain business licensing reflecting your chosen mark, be sure to consult with your corporate attorney to ensure that your mark is also available as a business name or trading name in any state where you may be required to file.
3. International Concerns.
Trademark rights are limited geographically. Even if your mark is fine for use and registration in the U.S., it may not be available in Canada, Mexico, or elsewhere. Clearance internationally can be expensive, so you will want to have a good idea of your international business plan and registration strategy before deciding whether, what, and how to clear internationally. Your trademark attorney can help you craft a strategy that fits your plan, budget, and risk tolerance.
Pro Tips for Using AI:
Given the expense and sometimes time investment needed for clearance, an increasing number of businesses are asking themselves whether and how AI can make this easier, less expensive, and/or faster. There is certainly a role for AI here, but caution is warranted.
Many of the common AI tools will offer to “run trademark searches” for you, including internationally, which generally means looking at official filings but may include some results from the web. Much like a basic web search (which you should do), if the AI tool finds a match, that may allow you to conduct some follow up research on your own and decide whether to go back to the drawing board before you have to spend the first penny on an attorney. However, there are several reasons not to rely exclusively on the AI results.
Knowledge Cut-Off. AI tools have a knowledge cut off, which will cause more recent filings to be ignored.
Missed Conflicts. They can miss obvious conflicts. For example, I asked a common AI tool to search the USPTO for “Enchanted Cookie Jar” and it told me there were other filings involving the term “cookie jar” for products entirely unrelated to cookies, but it missed the longstanding (pre-knowledge cut-off) registrations for “cookie jar” marks that were absolutely related to cookies but spelled differently (e.g., “kookie jar”).
An Incomplete View. Rights in the United States arise from use, not from registration. A search of the USPTO will not provide adequate clearance against state-registered marks or unregistered uses.
There are specialized AI-powered clearance tools that are available to trademark practitioners. Some of these tools are just doing the searching and delivering results to be evaluated independently. Others claim to ‘do the analysis’ for you by pre-ranking the results or assigning risk. Some are better than others. Be sure to ask your trademark practitioner whether and how they use AI clearance tools and, if so, how they vetted them.
Bonus Tip: Where your mark is an AI-generated logo, there are separate copyright concerns. We can only assess risk of copyright infringement by looking at source materials and other inspiration. So until the AI tools reliably provide all of their source materials, an AI-generated logo will be at risk from a copyright infringement perspective.
Once you have your mark or marks successfully cleared, registration considerations are up next. In our next installment, we’ll look to the cover the factors that go into whether and where to seek registration, and AI developments that may affect the registration process.
Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.