Trademark Search Overview

Conducting A Comprehensive Trademark Search

A comprehensive trademark search and clearance should be performed prior to the launch of any service or product in the marketplace to determine if the trademark is available for use, registrable and protectable. Without conducting a proper trademark search, business owners and entrepreneurs are flirting with financial disaster. Most brand owners spend a considerable amount of time, money, thought and other valuable resources to design and select a trademark that represents the identity of the product or service that will be offered in the marketplace. If a business owner forgoes the trademark search and launches a product or service in the marketplace with a name, design, logo or tagline that is identical or similar to an already existing registered trademark, the business owner is putting its investment at risk. Engaging our trademark attorneys to perform a comprehensive search and clearance of your trademark will help avoid costly and time consuming issues not only when you’re applying for trademark registration but also when your product or service enters the marketplace.

Search of All 50 State Databases, Federal Database, Other Online Databases

Our trademark attorneys will conduct a comprehensive trademark search, which includes searching all 50 state trademark databases and the United States Patent & Trademark Office (USPTO) federal database (and other trademark databases if necessary), to determine if our client’s proposed trademark is likely to be confused, dilute or infringe upon existing registered trademarks. During the trademark search and clearance, our trademark lawyers will take into account the similarity of any existing registered trademarks to our client’s proposed trademark in regards to appearance, sound, and meaning; the marketplace relationship between our client’s products or services to those products or services covered by identical or similar registered trademarks; the inherent distinctiveness of our client’s proposed trademark; and the likelihood that our client’s proposed trademark may cause consumer confusion in the marketplace with other registered trademarks.  Note, one of the most common reasons trademark applications are rejected is because the applied-for trademark is identical or too similar to a pending or registered trademark (i.e, trademark refusal on the basis of likelihood of confusion).

Avoid Costly Legal Problems, Save Money, Save Time

Engaging our trademark attorneys to perform a comprehensive search can help avoid legal problems and costly mistakes. Our trademark attorneys have the expertise and resources to conduct a thorough search of existing trademarks to determine the availability of your desired trademark, which can help you avoid using a trademark that is already in use by another party. This can help you avoid costly legal disputes and the need to rebrand in the future, which can be time-consuming and expensive. Additionally, our trademark attorneys can provide you with valuable advice on the strength and enforceability of your trademark and can help you navigate the complex legal process of registering a trademark.

We see many people perform their own search of the USPTO TESS database to assess the availability of a trademark, but it is not recommended as a substitute for consulting with a trademark attorney. While a search of the TESS database is a valuable step in the trademark clearance process, it may not be a comprehensive search and may not reveal all existing trademarks that could potentially conflict with your desired trademark.  Our trademark attorneys have the expertise, tools and resources to conduct a more thorough search, including searching common law trademarks, foreign trademarks, federal trademarks, and state trademark registrations, and can interpret the results of the trademark search to give you a more accurate assessment of the availability of your desired trademark. Additionally, our trademark attorneys can provide you with legal advice on trademark law, which can help you avoid costly legal disputes and mistakes.

Corsearch Trademark Search & Clearance Platform

Our trademark law firm uses Corsearch, the premier trademark search, trademark clearance and protection platform for trademark and brand solutions. The Corsearch trademark platform provides our attorneys with high-quality, intuitive tools that are unparalleled. Corsearch enables us to provide crucial legal advice to our clients at every stage of the trademark process, be proactive in enforcing and maintaining our clients’ trademark rights, effectively represent our clients at the USPTO’s Trademark Trial and Appeal Board, and efficiently manage our clients’ trademark portfolios.  With access to expansive global content, the Corsearch platform assists our trademark lawyers to monitor and protect our clients’ brands in an increasingly online, e-commerce business environment.

Purpose of a Trademark Search

Determining the availability of a trademark is the most common reason for performing a trademark search. Business owners must determine if their proposed trademark is available for use, and if so, is the trademark also protectable and registrable.  Before a business commits financial resources to the use and advertising of a proposed trademark, the business owner is well advised to engage a trademark attorney to perform a comprehensive trademark search to determine whether there exists any possible conflicts in using the proposed trademark.  The comprehensive trademark search is conducted by investigating all 50 state (and territories) trademark databases, the USPTO federal database, the internet and possible other international trademark databases.

Determining if a Trademark Can Be Protected

Basically, there are three categories of trademarks: (1) Inherently Distinctive; (2) Non-Inherently Distinctive; and (3) No Distinctiveness.  The term “distinctive” is a key term of art in Trademark Law.  The word “distinctive” sometimes causes misunderstanding because it does not have the same connotation that it has in everyday speech.  If a word, phrase, tagline or design is not distinctive, it is not considered a trademark and thus cannot be protected.  The general rule regarding distinctiveness states that a trademark is distinctive and capable of being protected if it either is inherently distinctive or has acquired distinctiveness through secondary meaning.  Arbitrary, fanciful and suggestive trademarks are inherently distinctive.  And in certain circumstances, descriptive trademarks can acquire distinctiveness by obtaining secondary meaning in the marketplace. Note, generic trademarks are never distinctive, can never achieve trademark status and thus cannot be protected. Types of marks eligible for registration on the Principal Register are: trademarks, service marks, collective marks and certification marks.

To qualify for registration on the Principal Register the following criteria must be met:

  • The trademark sought to be registered must, in fact, serve as a trademark to identify and distinguish goods and/or services.
  • The trademark must have been used in commerce before registration will issue. This means the good and/or services connected with the trademark must have been sold or rendered in interstate commerce.
  • A trademark must have been affixed (directly or indirectly) to the goods and/or services.
  • The trademark applicant must present certain facts in a verified written application to the USPTO. The written federal trademark application must be accompanied by the statutory filing fee of $250 or $350.

Determining If A Trademark Can Be Registered

If an entrepreneur or business owner engages a trademark attorney to perform a comprehensive search for a proposed trademark and the search results show that the trademark is available for use and if the business owner’s trademark attorney determines that the proposed trademark can be protected, the next question to answer is whether the trademark can be registered.  There are a number of factors that need to be weighed to determine whether a trademark can be registered.  If it is determined that the trademark can be registered, federal trademark registration confers a number of procedural and substantive legal advantages over reliance on common law rights (i.e. unregistered trademarks).

The Lanham Act confers important legal rights and benefits on trademark owners who register their marks.  Among these rights acquired by registration are:

  • In federal courts, profits, damages and costs are recoverable and treble damages and attorneys’ fees are available.
  • A registration of the Principal Register is prima facie evidence of the validity of a registered trademark, of the registration of the trademark, of the registrant’s ownership of the trademark, and of the registrant’s exclusive right to use the registered trademark.
  • A Principal Register registration may become “incontestable” as conclusive evidence of the registrant’s exclusive right to use the trademark, subject to certain statutory defenses.
  • A Principal Register registration is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption and use made after the date of registration.
  • For registrations resulting from applications filed after November 16, 1989, the registrant is entitled to a “constructive use date,” nationwide in effect, as of the filing date of the application, except as to a defined class of persons.
  • A Principal Register registration may be used to stop the importation into the United States of articles bearing an infringing mark.

Should I Hire A Trademark Attorney?

Yes, it is highly recommended. Our experienced trademark attorneys can provide valuable guidance and support throughout the trademark registration process, from conducting a comprehensive trademark search to determine the availability of the trademark, to preparing and filing the trademark application, to responding to any objections or challenges that may arise during the review process, and can represent you in any legal disputes or opposition proceedings.

Furthermore, our trademark attorneys can help you to navigate the complex and sometimes confusing legal requirements for trademark registration, and can help you to ensure that your application is complete and meets all of the necessary legal requirements. We can also help you to properly maintain your trademark registration, which is an ongoing process that requires ongoing monitoring and enforcement.

In short, engaging our trademark attorneys can help you to ensure that your trademark application is properly prepared, that it meets all of the legal requirements, and that you receive the full benefits of trademark protection. While it may cost more upfront to engage us, it can often save you time and money in the long run because we can help you avoid costly mistakes at every stage of the trademark registration process.

If you would like to contact us to discuss your trademark matter, give us a call or fill out our online contact form – it only takes a few seconds.  Once you send your message, one of our attorneys will contact you within one business day.