During this COVID-19 time when suddenly improbabilities have become realities, many find themselves looking to launch branded products that, even six months ago, may have seemed unlikely. However, some things have remained the same, such as the wisdom of performing trademark clearance searches and seeking trademark registration as an integral part of a good marketing strategy. This is particularly true as companies begin newly selling COVID-19 related goods, such as hand sanitizer, face masks, soap, and disinfectant, under existing or new brands. Unless the clearance process for these goods has been completed and a federal trademark application filed, this new use may present a high degree of risk. Moreover, unless your company has a federal trademark registration on these, or highly related goods, you may find yourself without exclusive rights nationwide for your brand with these new products. Thus, trademark clearance searching can help you identify and classify trademark risk, while also being instructive of whether you should file a federal trademark application.
Most recognize the importance of conducting a trademark clearance search for a completely new brand. However, trademark clearance searches for expanded products or services for existing marks are just as important. This is especially the case for new goods or services that are unrelated to existing goods and services. For example, Company A’s mark is federally registered for, and used on, candles and gift stationery that Company A manufactures and sells. Given current market realities and demands, Company A decides to manufacture, and use its mark on, face masks and hand sanitizers. But if Company A has not previously conducted a clearance search and registered its mark for these items, it may be taking a high risk by not doing so. Indeed, to the potential dismay of Company A, Company B already has a federal registration for the same mark on hand sanitizers and hair nets. Company A and Company B were able to peacefully co-exist while they used the same mark for unrelated goods (candles and stationery on one hand and hand sanitizers and hair nets on the other), but if Company A uses the mark for hand sanitizers and face masks, Company B would have good reason to object to this expanded use. The potential magnitude of this risk was recently increased by the Supreme Court’s Romag Fasteners v. Fossil Inc. decision (discussed more thoroughly here), which held that the infringer’s willfulness is not a requirement to obtain an award of the infringer’s profits in actions for false or misleading use of trademarks.
An added benefit to the trademark clearance search is that it can be a good indication of what level of resistance to expect from the USPTO should you file for a federal trademark registration. And if you would not want others to launch the same or related goods under the same or similar mark, you should strongly consider filing for federal trademark protection (or pivoting to a mark that allows you to file for federal trademark protection).
It is good to remember that you do not need to wait until you have actual use of a mark to file a trademark application, as the trademark office allows intent-to-use applications. An important advantage of the intent-to-use application is that it allows you to establish a priority date against others who come later, nationwide, as of your application’s filing date. One would expect with such tools available, there would be a flood of trademark application filings for COVID-19 related goods. However, surprisingly, the uptick in applications for COVID-19 related goods so far appears minimal. Between March 1, 2020, and May 4, 2020, there have been 3,671 trademark applications filed for “hand-sanitizing” goods. This number represents only a slight increase from March 1, 2019, through May 4, 2019, when there were 3,445 trademark applications filed for “hand-sanitizing” goods. In a world where so much is outside of our control, being “ahead of the curve” through cost-effective trademark clearance searching and federal trademark applications to mitigate your risk and protect your IP seems like a no-brainer.