With U.S. trademark examination timelines nearing one year, filing for trademark protection without searching means that the trademark application is being filed ‘blind.’ Not searching before filing means that in a worst-case scenario, it may take a year or longer to find out that a desired trademark is not available or not registrable, or may expose a business to a legal dispute. For business owners that are still not convinced of the value of a search, here are 10 reasons why it is essential to conduct a trademark search before filing for a trademark application:
1. To see if a different trademark is a better option
If search results for a proposed trademark disclose a high business risk, the business owner can determine the business’ appetite for such risk. The business may decide to select an alternate trademark, rather than risk not being able to secure a trademark registration or getting into a conflict, and before spending money on signage, domain names, advertisements, and product packaging.
2. To see if the mark will be refused registration due to any obvious barriers to registration
The most common reason to conduct a search before filing a trademark application is to ensure there are no identical or confusingly similar trademarks that may be a barrier to registration. After filing, the U.S. Trademark Office assigns a Trademark Examiner to review the application and to determine if there is a legal reason why the trademark is not registrable. A search gives the trademark attorney a picture of the existing landscape of trademark applications and registrations and can provide a brand owner with an idea of what to expect before investing in a trademark. Trademark searches determine availability, registrability, as well as the risk of a lawsuit.
3. To see if there are prior rights existing under common law
In the U.S., trademark rights are accorded to the first to use the trademark and not the first to register. A comprehensive search report (ordered from a 3rd party provider) provides in-depth results including federal trademarks, state trademarks, common law uses, website uses, domain names, business names. Common law use of a trademark may indicate existing unregistered trademark rights. In the U.S., unregistered rights can be used to challenge a trademark application or registration, or even file a lawsuit. While a knockout search of the U.S. Trademark Office database is better than no search at all, a comprehensive search report is the gold standard.
4. A comprehensive search report can help refute a charge of willful infringement
A comprehensive search report is evidence that a trademark owner did their due diligence before filing a trademark application. In the event of a conflict, having a comprehensive search report from a qualified attorney can help to refute a claim of willful infringement and avoid the treble damages associated with this claim.
5. To see if the mark is descriptive
An experienced trademark attorney can often sense that a proposed trademark is descriptive of the goods or services and inform their client of this risk. Descriptive trademarks are more challenging to register, and may only be registrable on the Supplemental Register (a separate trademark register in the U.S. that allows for registration of descriptive trademarks). However, sometimes it is not obvious that a trademark is descriptive. This could be due to a recent trend, a term having a meaning in a specific industry, being a term of art, or other specialized term. The fact that a term or phrase is descriptive may only become evident to the attorney through a search report.
6. To see if the mark fails to function as a source indicator
A trademark that is commonly used in the marketplace cannot function as a source indicator, even if it is not descriptive. A trademark that cannot function as an indicator of source cannot be registered and is likely not protectable. A search can be informative on this point.
7. To see if the mark can actually coexist with others
In some cases, the search may uncover numerous similar results, indicating the possibility that the marks can coexist by adding additional terms to the mark, or for different goods/services.
8. To see if the mark has a ‘negative’ meaning
Sometimes a seemingly innocent word can have a negative meaning that is not obvious to the brand owner or the attorney, perhaps due to it being slang or in another language. Searches can be informative on this issue.
9. To see if a narrow Identification of Goods and/or Services Can Avoid a Refusal
In some cases, the results of the search show that there may be a conflict. Nonetheless, it may be possible for a trademark attorney to write the identification of goods and/or services in a trademark application in such a way to avoid receiving a refusal for a likelihood of confusion, and also increase the chances of coexisting.
10. To help find a path to registration before a refusal is issued
When a trademark attorney files a trademark application without first conducting a trademark search, it means that they are not aware of any conflicts that may arise later in the process. A search can help the trademark attorney plan and determine if there are options to secure registration, even if a conflict is uncovered by a search report.
Trademark searches are an integral part of the process of securing a trademark, and provide numerous benefits both to the business owner, and also to their trademark attorney. Contact us to get started with a search today.