SEARCH/SELECTION
The trademark search is the critical first step to secure your trademark. You intend to invest significant resources in your brand, so getting it right at the beginning can be crucial. Our comprehensive search provides you with vital information to assess the chances of a successful registration and use of your trademark without legal challenge from others. The search also helps us prepare your APPLICATION FOR REGISTRATION.
Why do a trademark search?
You intend to invest significant resources in your brand. A trademark search gives you critical information to determine whether others have trademark rights that may conflict with your trademark. A search can confirm that your mark is likely 'clear' for use, or if there are possible obstacles ahead, either from another owner or as part of the registration process. We advise clients to undertake a comprehensive trademark search when possible. A trademark search helps avoid costly legal disputes that can drain resources you would otherwise use to develop your business or cast a cloud over your plan to grow. A proper trademark search also helps us draft your APPLICATION FOR REGISTRATION and helps limit the possibility an examiner or third party will raise a successful objection to prevent registration of your trademark.
How do searches work?
Trademark searches are typically done in a two-step process.
STEP 1. A preliminary "KNOCK-OUT" search involves searching the U.S. Patent and Trademark Office online system (TESS) for identical marks that are either already registered or are pending applications. Assuming no direct conflicts are found, additional 'KNOCK-OUT' searching is advised through Google and other free Internet-based search engines. A KNOCK OUT search is considered a low-cost preliminary screen, and many clients often undertake these searches on their own. KNOCK-OUT searches are typically used as a way of screening a possible mark and deciding whether or not to invest resources in FULL search to determine whether proceeding with an APPLICATION FOR REGISTRATION makes sense.
STEP 2. A "FULL SEARCH" utilizes a third-party provider to provide a comprehensive and broader search than a KNOCK-OUT search. In addition to searching USPTO records, a FULL search reviews common-law trademarks- trademarks that while not registered with the USPTO, are used locally or nationally, and can create significant obstacles to your registration and use of your trademark. The FULL search also expands the search to phonetic equivalents (such as Kat vs. Cat or Kwick vs. Quick), as marks that sound similar can also create issues for registration or use. The FULL search reviews all 50-states local trademark filings, multiple web search engines, domain names and proprietary databases. We utilize several third-party providers to accommodate your budget for a particular trademark.
How do we use the results?
We review each search to determine if any its results create a "likelihood of confusion" with your trademark. "Likelihood of confusion" is a legal term evaluated by analyzing the similarity between the marks, the similarity between the goods or services, how much the goods or services are related, and other factors. It is a complex analysis based upon the individual facts of each case. The results of our review help determine whether a mark is 'clear' and likely available or whether there are impediments to use or registration. The analysis of the search results help us decide whether to seek federal registration. If we do move forward, the search also helps us prepare the APPLICATION FOR REGISTRATION by tailoring our draft to avoid OFFICE ACTIONS from as a result of other applications or registrations.
Should I do a search if I am already using my trademark?
If resources permit it, then yes. You have probably invested significant resources in your trademark and brand, so a search can help you protect and build on your investment. A trademark search helps determine possible issues ahead. Based upon search results, we can advise you with strategies to help protect and improve your trademark rights. As described above, the search also helps us prepare the APPLICATION FOR REGISTRATION to avoid challenges that could delay or prevent your application from moving forward.
Contact us for more information.
Use the form below to contact us regarding your trademark search. You may also email or call us to make an appointment.