Congratulations! You’ve decided on a new name for your new company or brand. How exciting! Before you apply for federal trademark protection, it’s important to conduct some type of trademark searching. But what kind?
Many clients tell me they have already conducted a search of the USPTO records; however, this only provides part of the story. When we in our office conduct and analyze the full availability search results, we sometimes find issues. How do we account for the discrepancy?
First, searching USPTO records provides only one part of the equation. The U.S. system is one of few systems worldwide that recognizes common law rights. Therefore, a trademark does not have to be registered in order for prior rights to exist. This means that when we conduct full availability searches, we receive from the vendor an analysis of possible prior common law rights that we are able to analyze and provide a legal opinion as to whether any of these might be infringing.
Second, many preliminary or knockout searches conducted online at the USPTO are not as comprehensive as the full searches where many different variations of the proposed mark are searched to ensure there is no likely infringement. A knockout search is a great option when you have many names and are trying to narrow the field to one or two candidates for full availability searches.
Why we Search?
Many clients believe trademark searching is an unnecessary expense. However, we believe conducting a full availability search it is one of the least expensive preventative measures a business can take. The primary reason we undertake clearance searches is to ensure the proposed trademark is not likely to infringe any prior third-party trademarks. However, we learn a great deal more from a full availability search. The search provides us with valuable insight into the competitive landscape in the event the USPTO issues any refusals of registration. It can be a great asset and source of defense in the event the trademark owner receives a cease and desist letter. By conducting a full availability search in advance, a trained trademark attorney can review the search results and advise on all of these issues as well as whether the mark is relatively distinctive, or if the mark will enjoy a more narrow scope of protection.
Do I have to Search?
The choice to conduct trademark searching is always the client’s. Any competent U.S. trademark attorney will generally recommend a full availability search as a first step for the reasons outlined above. As trademark counsel, our job is to help you assess risk and not to tell you which mark you can and cannot use. Think of it this way – if the mark you have your heart set on is likely to be confused with a prior mark, you may be liable to pay damages if your mark is held to be infringing. Worse case scenario, you may have to change your company or brand name after you have already launched in the marketplace. Most business owners realize such a disruption, expense and confusion to its customers is not worth the relatively nominal expense of conducting a search at the outset.
Limitations of Searches
Please keep in mind that no search – whether knockout of full search – is foolproof. Even the full availability searches conducted by the leading vendors are conducted by humans who specialize in doing this type of work on a regular basis, but human nonetheless. Moreover, there is lag in the USPTO database. Also bear in mind, that the search is limited to the mark and goods and/or services searched. However, it is the best indicator we have to assess risk and provide trademark owners with peace of mind.
If you have any questions or require assistance with trademark searching, please feel free to contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at email@example.com.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.