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Jason Nardiello

Jason Nardiello’s Answers

1 total

  • Business Trademark question

    Hi! I chose a name for my marketing company, I looked up the trademark name and it is available. But there is a website named and on the terms page it says that any product name is registered as a Trademark from their company, how i...

    Jason’s Answer

    Hello--it seems that you are asking whether you can register the term SOCIAL STAR for use with your marketing company services and you have found a company that uses the same term on a website that appears to offer a social media game. The short answer is you will likely need an IP lawyer to help you determine if the term is available and if it is registrable, should you want to register it as a trademark. "Availablility" and "registrability" are actually two separate questions. Just because the USPTO will register a trademark, does not necessarily mean that it is "available." The reason for this has to do with "common law" trademark rights--rights that a trademark owner acquires in a mark based on his use of the mark in commerce. These rights are not based on registration.

    It is often believed that if a mark does not appear on the USPTO's database of registered or applied-for marks, then the mark is "available" for use. This is not always true and the consequences of being wrong could be disastrous.

    The reason for this is that trademark rights actually begin on "use of the mark in commerce." So, if another company were to commence using a certain mark as a trademark for goods or services, then they have rights from that point forward--even without a federal or state registration. A trademark owner with only common law rights may still exclude others from trading with its trademark, or those likely to cause confusion with it (under certain conditions) even though it has never formally registered its mark.

    To determine if the mark is available for use (as distinguished from available for registration), an experienced trademark attorney needs to conduct a search of not only the USPTO database (as you may have done) and state trademark databases, but may also conduct a "common law" search to see if anyone is using the term in connection with similar goods or services. This is also sometimes referred to as a "full search." A trademark attorney will sometimes purchase, on behalf of his client, a "trademark search report" from a reputable third party, such as CT Corsearch or Thompson based on set criteria determined by the attorney (disclaimer: I have no affiliation to these companies).

    The trademark attorney will then review the report, which may contain just a few, or sometimes hundreds or more marks that could be potential "problems" because they may either "block" a trademark application (the USPTO will not register your mark) or because someone else already has common law rights in the mark for similar goods or services as your mark.

    In any event, as you can see, there is much more to "trademark availability" than just a cursory check on the USPTO website. I know I didn't answer your question of whether the company you mentioned had a registration, but that really needs to be taken care of in the context of an attorney-client relationship. Good luck!

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