We address the question of whether I need to conduct a trademark search for my potential trademark in today’s issue.
A seller’s next step after selecting a potential trademark is to decide whether or not to conduct a trademark search. Before adopting, using or attempting to register a trademark, I am often asked whether a trademark search is necessary. There is no legal requirement for trademark searches, but trademark searches provide a valuable tool for evaluating the risks associated with adopting a new trademark before making a substantial investment emotionally or financially in the mark.
Using a trademark involves some risk; searching for a particular trademark gives you insight into the extent of this risk so you can make an informed decision.
How does a trademark search work?
The use of a trademark in commerce is the source of trademark rights in the United States. Keep checking back for our next newsletter about trademark registration rights and use rights. In that case, it is necessary to find out if any trademark owners already have trademarks that are similar to yours that may preclude you from using or registering your trademark. To search and clear a trademark, you gather and evaluate information to determine if that trademark is available and protectable. As a result, a trademark search identifies existing or previous trademarks with which your potential mark may compete.
It may also be worthwhile to search for trademarks that are already in use:
- In order to determine whether the use of a trademark that has not previously been cleared poses any risk.
- If the trademark is to be expanded or marketed, to consider the risks.
- In order to assess the risks associated with a change in name that could be used as a trademark.
- When assessing the strength of claims and objections made against the client based on the client’s trademark usage.
- As part of the process of assessing whether a potential infringement claim against the other party is strong.
- The strength of a trademark is assessed according to the number of similar or identical trademarks used by third parties (diluted market strength).
- This information is useful for identifying possible trademark infringements.
- In merger and acquisition due diligence.
What kinds of searches are there?
Many factors affect the kind of search a client chooses, including: (1) their budget, timing, and risk tolerance; (2) the nature of and the extent of their intended use of the potential trademark; (3) the competitive environment; and (4) whether they are registering the trademark federally.
There are nonetheless two types of searches: (1) a thorough or full search; and (2) a knockout or preliminary search.
Prior to investing in a more comprehensive and expensive trademark search service, a preliminary or knockout search identifies any obvious trademark conflicts. Their scope is limited and they do not identify the many types of spelling, phonetic, and other variations covered in a comprehensive full search. The preliminary or knockout search may only search for trademarks which are identical to your potential trademark, such as PRINCESS.
Full or comprehensive searches are full searches conducted by an outside vendor and include: records from the USPTO, state trademark registrations, common law and company name databases, websites, and domain name databases. A full search goes beyond searching for a trademark that is exactly the same and assesses for structural, phonetic and conceptual variations, such as abbreviations, spelling variations, phonetic equivalents, unusual punctuation forms, inventive and irregular word construction, visual elements, synonyms, translations (foreign equivalents) and transliterations. If PRINCESS is searched comprehensively, PRINCESSA or PRINCES may be identified as potential conflicts; however, a knockout search would not.
A comprehensive search is a more valuable tool for assessing the risks associated with a potential mark because the standard for trademark infringement is whether two marks are confusingly similar (not whether two marks are identical). Comprehensive searches cannot, however, provide 100% assurance. The search report may not show all trademarks and subjectivity is involved in the analysis.
In what ways are trademark searches beneficial?
Early in the brand development process, searching for and removing a mark will help you avoid:
- Weak trademarks that you cannot protect, or that require significant expenditures to protect;
- The building of goodwill around a trademark which you may have to drop because another party has priority rights to the trademark;
- Senior rights owners may be exposed to damages and attorneys’ fees if they claim or oppose.
Additionally, trademark searches and clearances provide the following benefits:
- Counsel’s logical and well-reasoned opinion of clearance could provide a defense against a claim of bad faith or willful infringement.
- The knowledge developed from the trademark search report and analysis may assist counsel in drafting trademark applications that are less likely to be rejected by the trademark office or to be opposed by third parties.
- Using the search results to create marketing materials may help you minimize the possibility of lawsuits from owners of similar trademarks discovered in the search.
Searching for trademarks offers many advantages, as you can see. Prior to filing any trademark application with the USPTO, we conduct a courtesy search for matching trademarks based on the same (word) phrases for our clients as a precaution. If you are considering using or adopting a potential trademark, we strongly recommend doing some preliminary research.
Practical Pointers
You can take some steps on your own to determine whether there are conflicts that would prevent your potential trademark from being adopted or used, or if the risk is so great that you should choose another trademark.
- You are less likely to have extensive conflicts if your mark is unique and creative.
- Make some of your own searches using free-of-charge online databases such as the USPTO’s TESS database, Internet search engines, domain name databases, local telephone directories, and state databases, among others.
- Then, see what products, services, and advertising are being offered, sold, and/or advertised under the identical marks. If these products/services are the same as yours, you probably have a high-risk potential trademark.
- For more information, contact a trademark attorney.