In today’s business landscape, trademarks are an essential aspect of any brand’s identity. They provide consumers with a quick and easy way to identify a product or service, and they help businesses establish and protect their unique identities in the marketplace. However, before applying for a trademark, it is crucial to conduct a trademark search report.
Burger King’s and Katy Perry’s recent loss is evidence of just that. In today’s blog post, we’ll be discussing the importance of conducting a trademark search report and why it is essential for any business looking to establish a unique brand identity. We’ll be using Burger King and Katy Perry as our examples.
What Do Burger King and Katy Perry have in common?
What do Burger King and Katy Perry have in common? It’s not their love of burgers. They were both late to registering their trademark in another country, specifically Australia.
If you didn’t know, Burger King operates under the name “Hungry Jack’s” in Australia. That is because when Burger King attempted to expand into Australia in 1971, they found that there was already a local restaurant named “Burger King” with a registered trademark. To avoid any conflict, the local Burger King franchisee decided to rename the franchise to Hungry Jack’s.
Similarly, when Katy Perry attempted to expand her brand into Australia, she was met with a pending trademark application for “KATIE PERRY” for clothing, filed in 2008 and in use since 2007 (before Katy Perry’s popularity in America, let alone Australia).
So in 2009, Katy Perry’s legal team issued a Cease and Desist to owner, Katie Perry to discontinue use of the mark and even attempted to fight against the registration of “KATIE PERRY”, but was unsuccessful. Katie believed that that was the end of this ordeal up until in 2014 and again in 2018 when Katy Perry toured in Australia, promoting and selling tour merchandise, majority of which was clothing.
Katy Perry as a hamubrger at the Met Gala 2019
As a result, Katie filed suit against the megastar for trademark infringement. And as of a couple days ago, Katie was awarded financial damages against Katy Perry in an amount to be determined next month.
For trademark purposes, it doesn’t matter that the spellings aren’t exactly the same. If two brands still have the same phonetic pronunciation and are providing similar products/services, the two brands can not co-exist. This would lead to consumer confusion, which is wholly counterproductive to trademark law.
Now, I honestly can’t say that I’m surprised that Katy Perry ran into a conflicting trademark. She is using a name that is so common. And I imagine there’s so many people with the exact spelling or some other variation of both “Katy” and “Perry”, who dream of being business owners. When a name is that common, you have to be first to register it!
And so, in addition to this being a reminder to build a distinctive brand name, this tale also demonstrates the importance of conducting a trademark search report.
What is a Trademark Search Report?
Before applying for a trademark, it is crucial to conduct a comprehensive trademark search report.
A trademark search report is a comprehensive search conducted to determine whether a proposed trademark is available for use and registration. It helps identify any existing trademarks or competitors that may conflict with your proposed trademark.
This report typically includes a search of both registered and unregistered trademarks in the relevant jurisdiction(s) and can provide information on similar or identical marks, pending applications, and expired trademarks. These reports also include information on common law trademarks, which are unregistered marks that have been used in commerce, but have not been registered with the relevant trademark office.
The trademark search report is an important step in the trademark registration process as it (1) helps to ensure that the proposed trademark is distinctive and unique enough to be registered, and (2) helps prevent potential legal issues if the proposed mark infringes on any existing trademarks.
These reports are provided by trademark attorneys with expertise in trademark law and trademark searching. With the help of powerful algorithms, we are able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, worldwide web results, social media, and more.
Benefits of a Trademark Search Report
Now that you understand what a trademark search report is, let’s discuss the benefits of this report for your business’ plans:
1. Saves Time & Money
One of the major benefits of conducting a trademark search report is saved time and money. Conducting a tradmeark search report can prevent you from investing time and resources into a trademark that cannot be registered or protected.
This means that your trademark search report report should ideally be completed prior to investing any money into a mark, whether it’s your brand name, logo, slogan, or some other source-identifier! It makes little sense to invest money into a mark before learning whether it will be available for your exclusive use.
Trust us. The last thing you’ll want to hear is that you’ve invested time and money into a trademark that cannot be used, and you will need to start from scratch. These are always difficult conversations to have, especially if you have already started to develop an attachment to your mark.
So after you’ve brainstormed a brand name, your immediate next step should be to conduct a trademark search report, not hire a web designer or graphic designer! Unfortunately, many business owners tend to do this out of order because they are unaware of the trademark process. So, if you’re a business owner reading this or know of any entrepreneurs, please pass this info along to your entrepreneurial friend.
2. Avoids Legal Issues
As mentioned previously, conducting a trademark search report also helps to prevent legal issues down the line.
A trademark search report can help identify any potential conflicts or infringement with existing trademarks. Having this report can prevent a business from unknowingly infringing on another company’s trademark and potentially facing legal action or even having to rebrand entirely.
In 1971, resources were limited. Burger King may not have reasonably been able to locate the local Australian restaurant operating under the same name.
However, the reports of the 2000s absolutely can identify these users! Sometimes, even a simple Google search can reveal so much. So Katy Perry’s team may not be able to share the same excuse.
It’s unclear whether Katy Perry discovered her competitor through a search report. However, what IS clear is that (1) Katy selected a non-distinctive name, as many celebrities who operate a brand under their personal names do; and (2) though she and her team were aware of the conflicting user, they proceeded to willfully infringe on Katie’s trademark rights withour regard to their previously failed attempts.
Katy’s team should have just found a more creative way to provide merchandise that excluded use of “KATY PERRY”. I’m sure this might be difficult, but these creative geniuses can figure something out! And it would have been cool for her to market this merchandise as something made exclusive to the fans of that continent. Now, unfortunately, they’ll have to pay up and rebrand if they wish to sell merchandise in Australia again.
This is why it’s best to rebrand at the onset before you’ve invested any more money into a trademark rather than rebrand after making large expenses and an expensive lawsuit.
3. Identifies Weaknesses
Last but not least, a trademark search report is important because it can help a business identify any potential weaknesses in their proposed trademark.
It is absolutely crucial that any proposed trademark submitted for registration is distinctive and unique enough to stand out in the marketplace. Conducting a trademark search report can help a business owner identify any similar trademarks or potential issues that could weaken their proposed trademark’s strength, as well as, provide insight into a business’ future expenses.
For example, if the report shows that there are many competitors with a “confusingly similar” trademark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is valuable information you should know prior to investing too much into your trademark and brand.
All the more reason to conduct your report PRIOR to hiring a professional to build your mark and/or marketing under your mark.
Conclusion
In conclusion, conducting a trademark search report is an essential step in building your brand and protecting your brand’s identity. It not only ensures that your proposed trademark is available for use and registration, but also helps to prevent potential issues in the future.
Both Burger King and Katy Perry could have benefitted from having a comprehensive report prior to gaining their notoriety. Maybe it would have convinced them to select a name not in use anywhere!
Moreover, while it may be tempting to DIY your search, we highly recommend that you hire our Firm to provide you with a thorough and comprehensive report and an Opinion Letter discussing your results. Even we use algorithms to help us generate this report and properly analyze the marketplace. And we’ll be able to apply our knowledge of the law and our personal expertise to provide you with the help you need to navigate the complexities of the trademark registration process.
By investing in a trademark search report, you will save time, money, and headache in the long run and build a strong brand that is unique and distinctively yours. Do not hesitate to contact to our Firm for your trademark search report and next steps to protect your brand identity. Get started on your trademark journey today! We’re only one phone call away…
Photos from my time spent in Sydney, AU
Fall 2013 & Feb-Nov 2015
