Why is a Trademark Search Recommended, and What Does It Entail?

Once you decide to register a trademark, what’s next? Before you start assembling an application and supporting materials, it is recommended to conduct a trademark search. What it involves? Basically searching the Internet, all federal and state registration records as well as the use in commerce of unregistered marks by other market participants. It is done to ensure that your mark is not in conflict with an already existing one. A trademark search can be conducted by a special trademark searching company or an individual trademark attorney. If a report is ordered from a company that uses technology to scan the Internet, it should always be reviewed by a trademark attorney. Why? The report will contain multiple entries, it may be 10 or more pages long, all similar marks will be listed, not only exact ones. The goal is to determine whether the proposed mark may infringe on the existing marks or not. It’s not always necessary that the marks be exactly the same in order to have infringing potential; marks that are very similar, and therefore can be confusing for the general public, will not be allowed for the registration. There are multiple principles by which it may be determined how and when the marks may be overlapping. It may not be obvious to a person who does not practice intellectual property law and is not involved in trademark registrations on a regular basis. The advice of a learned professional is definitely needed in such situation.

Trademark search is not mandatory, but highly recommended. First, you don’t want to spend time and money on preparation and submission of the application, which will be denied by USPTO for the reason of it being in conflict with another mark. Second, you don’t want to be in danger of being sued for the trademark infringement by the third parties.

Trademark infringement is an unauthorized use of a mark that is associated with similar goods or services. For every trademark, there is a spectrum of distinctiveness. It is based on a mark’s capacity to serve a source-identifying function. In other words, the mark needs to be recognized by a consumer. Distinctiveness is important because it protects the trademark from being copied.

Some try to search the Internet and determine the availability of the mark themselves. It is not a good idea. Often it is easy to find the marks that are registered on the federal level. However, searching state registrations may not be easy and is definitely time-consuming. Moreover, there is such thing as a common law trademark. Common law mark is a name, logo, color, and other items that fall under the definition of a trademark, but are not registered either on a state or federal level and nevertheless are actively used in commerce. The U.S. trademark law states “first in market – first in right”. Meaning, the priority is given to the one who started using the mark in commerce earlier. Even if a trademark is registered, the third party who believes he has a prevailing right to use the mark, can petition USPTO and the court for the cancellation of the registration and restrictive order prohibiting the use of this mark by any other person or entity. Entrepreneurs want to know that their rights and interests are properly protected before investing in the marketing and development of the business under a certain mark.

In sum, if no comprehensive search is conducted prior to the registration of the mark, the risk of future disputes, litigation, monetary and reputation loss is higher.

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