In today’s issue, we answer the question – Do I need to conduct a trademark search for my potential trademark?
Once a seller has selected one or more potential trademarks for its products or services, the next step is deciding whether or not to conduct a trademark search. Clients often ask me whether a trademark search is required before adopting, using or attempting to register a trademark. A trademark search is not legally required but is a valuable tool in assessing the risks associated with adopting a new trademark before a substantial emotional or monetary investment is made in that trademark.
Keep in mind that there is always some risk when adopting or using a trademark; searching helps you understand the scope of such risk so that you can decide whether you want to move forward with a particular trademark or not.
What is a trademark search?
In the United States, trademark rights are generally derived from using a mark in commerce. (We will talk about trademark registration rights and use rights in our next newsletter – stay tuned!). Therefore, it is important to see if there are any trademark owners with similar trademarks that can preclude you from using or registering your potential trademarks. Trademark searching and clearance is the process of gathering and assessing information to evaluate a potential trademark’s availability and protectability. In other words, a trademark search identifies other trademarks that have either been registered or used and that your potential trademark may conflict with.
Searching for trademarks already in use also may be valuable:
- For advising on the risks of certain uses of a trademark that were not previously cleared.
- For identifying risks associated with expanding the business or marketing under the trademark.
- For assessing risks with a change of name that may be used as a trademark.
- In assessing the strength of claims and objections brought by others based on a client’s use of the trademark.
- In assessing the strength of a potential infringement claim against another party.
- In assessing the strength of the trademark in terms of third party use of the same or similar trademarks (diluted market strength).
- For identifying potential infringements or misuses by others.
- In conducting due diligence in mergers, acquisitions, and financing transactions.
Are there different types of searches?
Searches can come in many forms depending on factors such as: (1) client’s budget, timing, and risk tolerance; (2) the nature and extent of the intended use of the potential trademark; (3) the competitive environment; and (4) whether the client is clearing the trademark for use and/or federal registration.
Nonetheless, there are essentially two types of searches: (1) a knockout or preliminary search; and (2) a comprehensive or full search.
A preliminary or knockout search identifies any obvious conflicting marks before investing in a more comprehensive and expensive search from a trademark search vendor. They are limited in scope and do not identify the many types of spelling, phonetic, or other variations covered by a comprehensive full search. For example, if your potential mark was PRINCESS; a preliminary or knockout search may only search for identical trademarks to PRINCESS.
A comprehensive or full search is a full search from an outside vendor and generally includes a search of: USPTO records, State-registered trademarks, common law and company name databases, websites, and domain name databases. Full searches go beyond searching for identical trademarks and seek to identify conceptual, structural and phonetic variations including: abbreviations, spelling variations, phonetic equivalents, unusual punctuation forms, inventive or irregular word construction; visual elements; synonyms; translations (foreign equivalents) and transliterations. For example, a comprehensive search for PRINCESS may identify a potential conflict in PRINCESSA or PRINCES; whereas a knockout search would not.
Since the standard for trademark infringement is whether two marks are confusingly similar (not whether two marks are identical), the comprehensive search is a more valuable tool for assessing the risks associated with your potential trademark. However, even full searches are not completely reliable. Some trademark may not appear in the search report and the analysis requires some level of subjectivity.
What are the benefits of conducting a trademark search?
Searching and clearing a mark early in the brand development process helps you to avoid:
- Adopting a weak trademark that you cannot protect, or that requires substantial costs to achieve the desired level of protection;
- Spending resources on building goodwill in a trademark that you may be forced to drop because another party has prior rights to that trademark;
- Exposure to damages and attorneys’ fees resulting from claims or oppositions by senior rights owners.
Other benefits of searching and clearing a trademark include that:
- A logical and well-reasoned clearance opinion from counsel may support a defense against a claim of bad faith or willful infringement.
- The knowledge developed from the search report and analysis may assist counsel in drafting trademark applications that minimize the likelihood of trademark office refusals or oppositions by third parties.
- The search results may help you in creating marketing materials that minimize the risk of challenges by the owners of similar trademark uncovered in the search.
As you see, there are many important advantages to trademark searching. In fact, we conduct a courtesy search of USPTO records for identical (word) trademarks for our clients prior to filing any trademark applications as a precautionary measure. However, we strongly urge you to conduct some level of searching in advance of using or adopting a potential trademark.
There are some things that you can do on your own to see if there are potential conflicts that would prevent you from using or adopting your potential trademark or create so much risk that you are better off selecting another potential trademark.
- As noted in our last newsletter, pick a distinctive mark! The more unique and creative your mark is, the less likely there will be extensive conflicts.
- Conduct some of your own searches using free-of-charge sources such as: (1) the USPTO’s online TESS database (http://tmsearch.uspto.gov/); (2) Internet search engines; (3) domain name databases; (4) local telephone listings; (5) secretary of state databases.
- If you find any identical marks, then research the goods/services being offered, sold, and/or advertised under those marks; if the goods/service are the same as yours, you are likely to have a high-risk potential trademark.
- If you have questions about what your search results mean, consult your lawyer!