The perils of picking a trademark

As anyone who has done it knows, picking a trademark is hard to do. First, there are the marketing considerations-a good mark can make a good product or service sell even better. Then there are the legal issues. Some marks are not entitled to legal protection (e.g., generic marks) and others are not available because they are already being used by others. One common procedure to determine the availability of a trademark is to conduct a trademark search to see if similar marks for similar goods or services have been used at common law or registered in a state trademark office or in the U.S. Patent and Trademark Office. Not infrequently, a mark with some similarity for somewhat similar goods or services will be found. In the beginning, the differences may be enough to avoid confusion of customers, but with time the situation can change so that the simultaneous use of the two marks becomes a business problem. That is what happened in the recent case of Dreamwerks vs. SKG Studio.