It will be difficult to find someone who has not heard, through the media or social networks, the name of the new company created by Google: Alphabet.
However, considering this only from the perspective of trademarks, we are greatly surprised by the fact that such an important company as Google has not conducted, or at least so it seems, a simple search before announcing the launch of Alphabet with a great fanfare.
There are many reasons that make it recommendable to conduct a search before publicizing a trademark, announcing the launch of a product and even, as in the case of Google, before carrying out an expansion or reorganization. No precaution can ever be considered an exaggeration in these circles.
Below we give some of the main reasons for which we recommend a prior investigation of trademarks to be carried out, not only to have a guarantee as regards the protection of the desired name, but also to avoid conflicts with third parties:
- Any word in any language can serve as a trademark, depending on how it is to be used and on the products/services to be identified.
- A prior trademark search should not be considered to be an unnecessary expense or an extra burden. On the contrary, it is one of the best investments that a company can make before launching a trademark, a product, or expanding to other countries.
- The prior search must be conducted in respect of the desired name and focused on the territory within which it is to be protected. If what is required is a national trademark it will be sufficient to search the national trademark registries but, when the aim is to obtain protection in several territories, either because the commercialization of the products in the same is ensured or in view of expansion to other countries, the most recommendable course to extend the search to an international, community or, even, a worldwide level.
- The name of the company, trade name, the trademark, the logo or the slogan used to identify a company's products and/or services can incur in an infraction if the name and its use have not been correctly verified beforehand.
- There exists the belief that the sole inclusion of the company name in the trade registry is already sufficient. False. This registry does not authorize the use of the said name as a trademark nor, in the majority of cases, is it a sufficient defense against a claim for infringing the trademark of a third party.
- It is possible to commit an innocent infringement of the trademark of a third party. It is not necessary to have prior knowledge of an earlier trademark to be responsible for an infraction.
- It is possible to infringe another's trademark even though they may not be identical or have the same application.
- It is not advisable to use the names of famous people and/or well known brands as a trademark even when its use is destined for different products/services with no relationship whatsoever.
If, in the light of the above, you still consider it unnecessary to conduct a prior search, just imagine what would be the cost of investing time, money and effort in launching and protecting a trademark just to discover, later on, that is identical to or may be confused with an earlier one. All that work and money put in would have been wasted and, in the majority of cases, the only solution would be to start again.
If Google had conducted a search before launching "Alphabet", it might have realized that there are many trademarks in existence with that denomination. In the U.S. alone there are more than 100 brands with the denomination "Alphabet". There is an identical situation in the registers of the WIPO and the OHIM, with more than 200 and 40 trademarks respectively.
In fact, the setbacks for Google have not taken long to appear and BMW has already announced that it is evaluating whether Google's new trademark infringes its earlier trademark “Alphabet”.
To conclude, the task is not only completed by the mere fact of choosing a name for the trademark with originality, ingenuity and creativity, but it is also important and highly advisable to carry out a prior investigation in order to anticipate future conflicts and disappointments.