AI-Guided Trademark Development: Mitigating Infringement Risks
Over the last few months, I’ve been receiving this question more often: Can I use generative AI to develop a protectable trademark? And the answer may surprise you:
Yes, as long as you still complete a thorough trademark clearance search before settling on a name or logo.
However, do I recommend using generative AI to develop a protectable trademark?
No.
While AI can serve as a powerful tool for brainstorming, by generating a variety of options to spark inspiration, it cannot navigate the legal intricacies of trademark registration and law.
In the evolving digital landscape, the emergence of generative AI has revolutionized the way we approach creativity and content generation. However, when it comes to legal matters such as trademark registration, the use of AI, particularly for creating brand names or logos, presents significant limitations.
In this article, I will discuss why solely relying on AI to develop your brand might lead to issues when attempting to register a trademark with the United States Patent and Trademark Office (USPTO).
Understanding how generative AI works
First, it’s essential to understand that generative AI operates by referencing and recombining elements from its training data, which pulls from information that’s already available online. All AI models, including those used for generating brand elements, are trained on datasets derived from publicly available information and databases.
This means that while generative AI can generate novel ideas or designs, these outputs are fundamentally rooted in pre-existing concepts.
Understanding the components of a strong trademark
When applying for a trademark, originality and distinctiveness are key. If your trademark too closely resembles an already existing, registered trademark, yours will likely be rejected by the USPTO.
The USPTO’s stringent criteria ensures that each registered trademark is unique and not likely to cause any consumer confusion with previously established trademarks. Therefore, an AI-generated name or logo might inadvertently resemble existing intellectual property, leading to challenges with registering AI-generated names/logos as trademarks.
Trademarks exist on a sliding scale of protectability, and there’s quite a bit of nuance in determining where a certain trademark falls on that scale. For example, the name “Red Apple Farms” for a brand of apples would be rejected by the USPTO for being too generic.
On the other side of the scale, “Rolex” is a very strong name for a brand of watches because the name is original and has little/nothing to do with watches.
Beyond that, trademarks can fall anywhere on the scale of protectability, ranging from fanciful (such as Rolex) to arbitrary marks (such as Apple for a brand of computers), to suggestive marks (such as Netflix).
Determining where a trademark falls on this scale requires human judgment and expertise in trademark law to ensure compliance with USPTO guidelines and the ability to assess the likelihood of successful registration.
Example: Naming a brand of pet food with ChatGPT
To show an example of how generative AI can create problematic branding, I asked Chat GPT to come up with some names and logos for a brand of pet food.
I then ran a few of the options through an extremely basic trademark clearance search and found existing trademarks that would be problematic to the registration of ChatGPT’s brand names.
AI can’t replace an attorney-driven trademark clearance search
The trademark registration process involves not just the creation of a name or logo, but also conducting thorough clearance searches for potential conflicts.
Our firm has tested multiple AI-based clearance searches and found that the technology still falls short of the capabilities of trained professionals.
A thorough trademark clearance search inspects the USPTO’s federal register and all 50 US state registers, as well as a common law search. This type of search doesn’t only focus on exact matches, it also looks for:
- Phonetic equivalents
- Foreign language equivalents
- Meaning equivalents
At Gerben IP, our trademark clearance search is conducted through two professional search softwares and takes approximately 2-3 hours to complete. Each search is performed by two highly trained paralegals and a trademark attorney for redundancy and accuracy.
Once completed, the trademark owner is presented with an opinion letter on the search findings, which includes any potential risks.
Final thoughts
In the realm of trademarks, where uniqueness is paramount, the derivative nature of AI-generated content may very well fall short of meeting the legal standards for trademarks set forth by the USPTO.
So, while generative AI offers exciting new possibilities for creativity and innovation, its application in trademark creation and registration is best approached with caution. It can undoubtedly aid in the brainstorming process, providing a springboard for human creativity.
However, the final selection and legal clearance of a trademark should ideally be overseen by professionals skilled in trademark law.
This ensures that your brand identity not only stands out but also stands up to the legal requirements set by the USPTO for trademark protection. If you need help registering a trademark, contact our experienced attorneys for a complimentary consultation.
Eric Perrott, Esq.
Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
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