Considerations When Planning for the Trademark Search

What is the trademarks to be searched? A word mark? A design mark? A design plus word mark?

  • Is the trademark live, dead or abandoned?
  • What goods or services is this trademark used for? What classification(s) is the trademark being prosecuted or registered in?
  • What channels of trade will the trademark be used in?
  • Are other individuals or companies currently using the trademark or similar trademarks?
  • If there are existing registered federal trademarks, are they registered on the principal or supplemental register?
  • Will there be any other marks, slogans, designs, or distinctive packaging used with the trademark?

The Trademark to be Searched

While the aforementioned list is by no means exhaustive, the questions may seem fairly easy to answer. However, when actively performing the search, the questions often become more difficult to answer than anticipated. For example, if a trademark contains both a word mark and a design mark, such as a logo, it would be necessary to conduct at least two trademark searches; one searching simply for the word or words, and a second search for the actual design elements and appearance of the design mark, logo or advertisement.

Goods or Services and Channels of Trade

To add to the complexity of a trademark search, it is important to determine what products, goods or services are used in connection with the trademark, what markets or industry categories the trademark will be employed, and what type of audience is being targeted with the trademark. Therefore, it is necessary to have a clear understanding of the trademark to be used, how the trademark is going to be used, and where the trademark is going to be employed in order to achieve a high likelihood of success in the trademarks registration.

It is always important to give as much information about the proposed trademark as possible to your legal counsel in order for them to perform the most efficient, effective trademark search possible.

Preliminary Search vs Full Searches

The purpose of a preliminary search is to uncover clear and obvious conflicts with existing registered trademarks right from the start. Often times preliminary trademark searches can give a quick and definitive “no” to a proposed trademark, but will not give you a clear “yes” to the trademark. When it has been revealed that a preliminary search has not ruled out a proposed mark, then a much more thorough and in depth trademark search is conducted uses multiple channels and sources to uncover potential conflicting marks.

Timing of the Search

The timing of when you decide to conduct a search has important legal implications to your trademark. The main question of timing is whether you plan on filing a trademark application before the search, or after. Typically, a preliminary trademark search is conducted before the trademark application is filed with the Trademark Office. This ensures that the business or entrepreneur understands the potential conflicts associated with the proposed trademark(s) to be prosecuted and can plan for any necessary responses to the issuance of a rejection or refusal by the Trademark Office examining attorney.