Choosing a trademark may be more difficult than you think. You might be focusing on the catchiness of the name, but there are legal considerations that should be considered as well, such as the possibility of infringing some other trademark.
People often think that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark doesn’t have to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
Wm. Wrigley Jr. Co., which makes SKITTLES candy, has sued Terphogz, creator of the candy-flavored ZKITTLEZ cannabis strain, for its use of the ZKITTLEZ mark on a variety of cannabis-related products, including THC-laced edibles (THC is the main psychoactive compound in cannabis, that is, the one that gets people high).
Terphogz has also filed for federal registration of design marks bearing the words ZKITTLEZ HEMP for use in connection with “smokable hemp flower,” CBD concentrates and infusions, and cigarette rolling trays (trademarks for products containing more than .3% THC cannot be registered).
In addition, Terphogz sells shirts bearing the hashtag TaztetheZtrainBro, a riff on the Skittles “Taste the rainbow” ad campaign.
Wrigley is not only seeking damages from Terphogz and its resellers, but also requesting that the court ban Terphogz from selling the ZKITTLEZ products.
To help avoid problems like this when you choose a trademark for your product or service, obtain the opinion of an experienced trademark lawyer before concluding that your mark is non-infringing.
Anyone choosing a new trademark should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
Photo by Hello I’m Nik on Unsplash
