More on the Importance of Trademark Searching
Trademark clearance is a critical step in the trademark process. We cannot emphasize strongly enough the importance of searching a proposed mark prior to filing a trademark application with the United States Patent & Trademark Office ("USPTO") or with Trademark Offices around the world. There are different types of trademark searches, such as a preliminary search, a knockout search, a full U.S. search, and international searches in individual countries or in groups of countries. This page will discuss trademark searching as it relates to clearing a mark for use and filing in the United States.
The first search that should be conducted is a preliminary search. This type of search can provide feedback that is useful in aiding in the decision as to whether or not to conduct a full U.S. search. A preliminary search can be conducted by the mark owner or by trademark counsel. The objective of a preliminary search is to discover marks that would immediately present an obstacle to registration at the USPTO or place the mark owner at risk of being sued for infringement. This type of a search can assist you in avoiding the cost of a full U.S. search. The costs associated with a full U.S. search will depend on whether the mark to be searched is a word mark or a design mark. Design clearance searches tend to cost more than word mark searches and are very difficult to search on a preliminary basis.
Do not be surprised if you find that the mark you are interested in adopting is currently in use by a third party or already registered at the USPTO. Entrepreneurs are savvy and understand the value of protecting their intellectual property. As a result, trademark filings are on the rise at the USPTO. It can take weeks or months to select, clear and adopt a trademark. We counsel our clients to be patient and to conduct the proper searching at the early stages of building the business.
Keep in mind, you are not seeking simply to find identical marks for related goods or services, as you may be if you were conducting a "knockout search". A preliminary search is looking for marks that would cause a likelihood of confusion in the marketplace. To determine if a likelihood of confusion would occur, multiple factors are considered. See our webpage entitled, Likelihood of Confusion Refusals - 2(d) Refusals, to review the thirteen factors relevant to this determination. Typically, the two most critical factors are similarities between the trademarks and the relatedness between the goods and/or services.
A preliminary search should be conducted in the database of the USPTO and on the Internet. The Internet search will be the first step in reviewing unregistered use or common law use. When conducting a preliminary search one should focus on the visual look of the mark, the sound of the mark when pronounced, the meaning of the trademark with the ordinary consumer, and the overall commercial impression. In addition, it is important to compare the goods and/or services. For example, if one mark is used for apparel and an identical mark is used for handbags, the goods are closely related so that a consumer who encounters the trademarks could mistakenly think that the two companies are associated or affiliated with one another. In other words, if it is common for the same company to sell both goods, then it is likely consumers could be confused by identical or very similar trademarks.
If the preliminary search doesn't reveal any immediate obstacles to registration or use, then a full U.S. search should be conducted with a professional search company. No trademark search will be 100% effective in predicting success in registration. Please recognize that although the search process is intended to reduce the potential for infringement claims, the risk of infringement is never completely eliminated. Even the most thorough search may not uncover every potentially conflicting mark. However, by conducting a trademark clearance search, you are protecting your investment in a new mark while eliminating as much risk as the circumstances allow. If you have any questions, pertaining to trademark clearance, please do not hesitate to contact us for a courtesy consultation.