Performing a Trademark Search

Performing a trademark search is critically important before any start-up, entrepreneur selects a new mark that identifies the source of the business, service or product. The main result of the search is to determine if your new mark is available for use. Without conducting a proper search, you are flirting with financial disaster. You spent time, money, and other valuable resources to design and select a mark that represents the identity of your good or service. If your mark is similar to another mark or is likely to cause confusion with or dilute an existing mark, then you are putting your investment at risk.

Using legal counsel can help prevent a lost on your investment. Legal counsel will conduct a thorough trademark search to determine if your proposed mark is likely to be confused or dilute an existing mark. During the search, our office takes into account the similarity of marks in regards to: appearance, sound, and meaning; the marketplace relationship between your incoming goods or services and those of the owner of a pre-existing mark; the inherent distinctiveness of the pre-existing mark; and the likelihood that your proposed mark will dilute any existing famous marks.

Failure on your part to conduct a thorough search can lead to your mark infringing on another mark. This results in the possibility of the owner of the pre-registered mark preventing you from using the mark in addition to the potential for that owner seeking disgorgement of your profits and other damages that were caused form your infringement.

Many individuals think that they can conduct a search properly on their own. They log onto the USPTO website and conduct their search. However, relying solely on the USPTO website is not enough to determine if your proposed mark infringes on another as there can be valid common law trademarks that are not registered with the USPTO. This leads to many channels that need to be checked to ensure that your mark does not infringe a pre-existing mark. Legal counsel can effectively navigate and search all necessary channels, which is an effective and important precaution against financial loss and commercial disaster.

Uses of Searching

Determining the Availability of a Mark

This is the most common use of performing a trademark search. It must be determined if your proposed mark is available for registration, or if you have an existing mark that you would like to expand to another market, that there is not a similar mark registered in that market.

The test of availability is whether the mark is likely to cause confusion with a mark that has already been registered or granted common law legal protection. If confusion is likely, your proposed mark would infringe the pre-existing mark and should not be used. If the mark is not likely to infringe, legal counsel must still take into account whether your mark is likely to dilute another mark.

Determining the availability of your proposed trademark will also allow you to conclude whether your mark is protectable and whether it is registrable.

Protectibility

Typically, if your proposed mark is distinctive, then it will be protectable. However, sometimes a thorough search will uncover that one or more of the terms you wish to use in your mark will be considered descriptive or generic. Depending on which is found will determine the potential for your mark. If your mark is ruled descriptive, it cannot be immediately protected as a trademark. Conversely, if your mark is ruled generic, it cannot receive trademark protection at all.

Registrability

A search may discover that your mark is protectable. This is not the last step in the road though. Even though a mark can be protectable, it may be doubtful to be registrable. This does happen more often then not. An example is when a search reveals there is an identical mark that has been abandoned. Even though it has been abandoned, if it is still registered with the USPTO, it is still offered protection. While it is not required that a trademark be registered to be afforded legal protection it is important to think about and understand the benefits of having a registered trademark. One being that a registered trademark carries with it a presumption of nationwide rights in the mark effective as the date the application is filed. Compared to a valid common law trademark whose rights only begin upon use of the mark and extend only to the geographic markets where the mark is known.

Preventing a Lawsuit

The question asked over and over again is, “If I adopt this mark, will I be sued?” Completing a trademark search will answer this question for you. A search will yield a list of results that show a mix of registered marks and marks that have either been abandoned, dead, or had their application turned down. From this list, counsel can find marks that are have any sort of relevance to your proposed mark. After reviewing these marks or other applications, a determination can then be made at the likelihood that using the mark would bring a lawsuit or not. If the owner of a registered trademark does bring a trademark infringement or dilution suit and you lose, the result could be simply preventing you from using the mark, or could be as disastrous as the mark owner seeking part of your company’s profits or other potential damages from your infringement or dilution. Doing a proper trademark search and clearance can prevent this from happening and destroying your business and reputation.

Determining Descriptiveness or Genericness