subject: The Relevance Of Trademark Searches [print this page] The Relevance Of Trademark Searches The Relevance Of Trademark Searches
You've selected your brand name, maybe even designed your logo.You love it and can't wait to share it with the world.But before you plow thousands of dollars into your advertising campaign and marketing materials, hold on just a minute.How do you know if you can really own that name?How do you know someone else out there isn't using the exact same name for the exact same or similar products? How do you know you won't get sued for trademark infringement?Is that even possible?It is, after all, your brand, right?The short answer is, maybe not!
The best way to know what other brands or marks exist that may possibly affect your right to own a particular name is to conduct a trademark search.There are several options to search a trademark, each depending on the prospective trademark owner's objective and budget.
Basic Federal Search This option is usually an exact match or "knockout" search of the federal trademark database.If your trademark were "Pretty Paws Pet Place," a basic federal search would help you determine if that exact mark is already registered as a trademark.
Comprehensive Federal Search This option is generally broader in scope and includes variations of the mark to determine if there are any potentially confusing marks already registered.Following our example, a comprehensive federal search would cover "Pretty Paws Pet Place," as well as "Pretty Paws," "Paws Pet Place" and/or "Pet Place."
Comprehensive Trademark Search This is the broadest of trademark searches, and generally includes the federal trademark database, all 50 States, domain name registrations and business registrations.A comprehensive trademark search includes your exact mark, as well as variations that may create consumer confusion and possibly affect your ability to use and register the mark.
The Pros and Cons of Searching
Like most things, there are pros and cons to running a trademark search but the pros almost always outweigh the cons in every instance.
CON: It costs more, initially.Trademark searches cost more up front than simply proceeding without one and filing a trademark application directly. Any perceived cost savings, however, may cost you more in the long run if the Unites States Patent and Trademark Office (USPTO) finds a problem with your trademark application based on a prior-registered mark. In considering a trademark for registration, the USPTO looks not only at the mark contained in the application, but also variations of the mark that could possibly be confused with another registered or prior-filed trademark.If the trademark applicant fails to conduct a trademark search before filing the application, he or she may be in for a costly surprise if the USPTO issues an Office Action refusing registration on the basis of likelihood of confusion with another mark. Office Action responses usually incur additional fees and if the mark cannot be registered, any legal expenses and filing fees paid are generally non-refundable.
CON: It may force you to rethink or rework your brand.This is pretty self-explanatory.If you conduct a trademark search and determine that your mark is already in use and registered by another trademark owner, you may have to take a step back and consider rebranding. This may require additional time and money but it is worth it in the long run because: (1) you would find out before you spend even more time and money building up a brand that arguably belongs to someone else, and (2) you'll have a better chance of having complete ownership of your brand when your trademark ultimately registers.
PRO: It reduces risk. As mentioned above, a trademark search reduces some of the unknown and inevitable risks that may arise during the trademark registration process.
PRO: Trademark searches allow applicants to know ahead of time what other marks exist that may affect their chances of getting a registered trademark.
PRO: A trademark search may avoid unnecessary expenses, such as Office Action responses and non-refundable filing and legal fees.
PRO: Trademark searches reduce the risk of being sued for trademark infringement or facing an action for cancellation of your mark.In addition to seeking approval from the USPTO, trademark applicants must navigate past other trademark owners who are entitled to protect their trademark rights. This may be in the form of a Cease and Desist Letter, a Notice of Intent to Oppose your mark, or something more aggressive like an Opposition or Cancellation Proceeding before the Trademark Trial and Appeal Board or a lawsuit in federal court for trademark infringement.
Finally, a common question here at FlatFeeTrademark.com is "can I do my own trademark search?"The answer is, of course you can! There is a wide world of information available at your fingertips.You could also use an experienced trademark attorney who has a better understanding of what to search for and how other marks may affect your trademark rights, in addition to paid access to comprehensive trademark databases. Whether to search on your own or employ the services of a trademark attorney is a business decision only you can make.In closing, don't be cheap with your brand. Run a trademark search before you start investing heavily in your brand only to find out that you never really owned it in the first place.
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