Part 2: What is a Trademark Search and Why Do I Need One?
Clients and prospective clients commonly ask, “when is the best time to file my trademark application?” Part 2 of this 3-part series explores trademark searches and the benefits that they provide. It also discusses common pitfalls of not using an attorney for a trademark search. Click here to read Part 1.
Search it yourself – But beware of the pitfalls
An experienced trademark attorney will advise conducting a trademark search prior to using a trademark or filing a trademark application. While searches are not mandatory, they are generally advisable because they help to give a picture of the trademark landscape and provide a level of certainty with respect to securing a trademark registration.
Searches can usually be conducted at a fixed cost and the value of retaining an attorney is to benefit from their knowledge and experience with gauging a trademark’s risk for a business. Risks include:
1. Risk of the trademark owner receiving a cease and desist letter or being the subject of a lawsuit.
2. Risk of rejection with the United States Patent and Trademark Office (USPTO);
3. Risk of having the trademark application opposed after filing; and/or
Even if the trademark search uncovers potential conflicts, the search results can help a trademark attorney to plan for any bumps in the road in seeking a trademark registration.
While a business owner can do a trademark clearance search for themselves, there is a caveat that their search results will likely be meaningless without any context. The biggest danger of self-searching is that an inexperienced searcher could reach the wrong conclusion based on the search results, or could miss relevant results entirely due to a lack of familiarity with the searching process and what is considered to be confusingly similar.
On the other hand, not searching prior to use or filing can end in disaster. If a trademark application is filed with the USPTO a trademark Examiner (who is also an attorney) will examine the application and may refuse registration if they deem it to be confusingly similar to another trademark application or registration. An experienced trademark attorney could use the search results to devise a filing strategy to increase the likelihood of registration in cases where the trademark is not overtly available.
Even if the USPTO does not step in with a refusal to register (aka, an office action), established brands often monitor the trademark register for anything that could threaten their brand. There is nothing worse than filing for a trademark application and being approved to move forward by the USPTO, only to receive a cease and desist letter from a business claiming prior rights. The applicant may then have to face the costs of renaming, changing its website, its signage, product packaging, and/or advertising. Even worse is the incalculable loss of any established goodwill associated with the trademark, which will need to be rebuilt with a new name. In view of these worst-case scenarios, the comparatively modest cost of an attorney-run search can help minimize the risk of these situations. Also, in some cases, having a search report can help defend against a claim of trademark infringement. Numerous co-existing results uncovered by a search can help to justify why there is no likelihood of confusion when use or registration of a trademark is challenged by a potential plaintiff.
With these caveats in mind, if a business owner is intent on not using an attorney, then a cursory self-run search is still better than no search at all. The goal of the search is strictly to eliminate any of the most obvious conflicts: identical marks for identical goods that are in use in the U.S.
The search should start off by checking for the trademark and the goods or services of interest through a regular search engine. Product names should also be searched on Amazon.com. A more ambitious DIYer may opt to search their industry’s database (should one exist) and on the USPTO’s TESS database.
However, with respect to the USPTO results, the risk remains that the results could be misinterpreted or relevant results omitted from the search strategy. Searching the USPTO records takes experience, as does interpreting the actual risks presented by the results. If the search results create any doubt as to whether the trademark is available, then a self-searcher should consider an alternate name and restart the process.
Part 3 of this series will examine the next steps in the trademark process, specifically use and filing strategies.
If you missed part one of this series you can find it here.