It happens every time. A client falls in love with a trademark that is perfect for his new company. I perform a search and have to be the bearer of bad news: The field is crowded. That is, there are many variations of that perfect mark already registered to other companies, which are even in the same industry, and it will be a waste of money to pursue perfection.

But, of course, before acceptance comes bargaining. It’s only human. The question “How did the field get crowded?” comes in many forms:

  • I’ve never heard of any those companies or any of those marks!
  • If I can’t get my mark, how did they get their marks?
  • How did the last person in the field get his mark in an already crowded field?
    • Of course, that question is really: “Why didn’t his attorney break the bad news to him?”
      • Which is really: “Why are you breaking the bad news to me?”
        • Really: “Are you a good attorney?”

I don’t mind. It’s only human. But the answer to how the field got crowded is that a variety of factors contributed to similar marks being registered in the same industry over time.

1) Settlement Agreements. Sometimes companies agree not to enforce their similar marks against each other after a barrage of low-cost cease and desist letters but before expensive litigation. These settlement agreements can be presented to the United States Patent and Trademark Office in favor of registration for marks that would otherwise be refused.

2) Luck. Trademark examiners are human beings, and they make mistakes sometimes.

3) Good Attorneys. Sometimes attorneys make good arguments as to why the average customer would not confuse similar marks. I have often convincingly made those arguments, and it feels great every time. However, the calculus of arguing for an already-filed mark (having a variety of legal and marketing sunk costs) is different than that of filing a mark with a low probability of success and low switching costs.

4) Money. Unsurprisingly, this is the largest factor. Sometimes big companies try 10 applications of slightly different marks hoping that one will get through due to some combination of the factors above. That’s $10,000 for one registered mark while I am targeting a much better ROI of $1,000 for one registered mark. Of course, that’s a diplomatic way of saying, “They can get theirs, but you can’t get yours.” Sometimes I mind that.

All of these “sometimes” add up to make a crowded field and to make me the bad guy. I don’t mind. Being the bad guy is being the good guy if it saves my client’s money. Every time.

 

Tim D. Chheda is a patent and trademark attorney with Selman Munson & Lerner in Houston.