The Danger of Free Trademark Search Software

We often get phone calls from prospective clients that tell us they’ve already done a trademark search online and are just looking for help with their application.

As someone who has done thousands of trademark searches, has experimented with various online search softwares, and has paid artificial intelligence software companies to test their programs, the one thing I can tell you is that there is no online trademark search software that allows you to type in your trademark and miraculously be given a list of all potential problems that exist. That technology, even in today’s AI world, simply does not exist.

Websites, like the USPTO, private law firms, and companies offering AI services, are all initial screening tools. This means that you can put in your trademark and look for very obvious problems. So, while they are a good place to start, they are far from definitive.

Why “Free” Online Trademark Searches Doesn’t Work

There are two main reasons why online trademark searches are simply not definitive.

  1. If you are not an experienced trademark attorney and you’re looking at a list of search results, you could easily miss issues and problems. While you might think another mark is different than yours, will the USPTO also think that when they review your application? Will that other company think that when they see your product or service in the marketplace?
  2. The second reason these searches simply do not work is the software that’s available is just not advanced enough to find all potential conflicts. Let’s take my dad’s automotive repair center as an example. The name of his company is “Tires Etc.” If you do a search on the USPTO website for “Tires Et Cetera”, you would not see his federally registered trademark. However, if you tried to file an application for this mark, there’s a massive risk that the USPTO would deny that application, and even higher risk that you would receive a cease and desist letter from me on behalf of my dad.

The bottom is unless you have a trademark attorney that’s using a professional grade software and has a lot of experience analyzing trademark searches, you simply cannot get a full clearance report.

These searches, when done right, take at least three hours of time and multiple people looking at them. If you’re looking for something that’s not there and you’re trying to prove that something’s not there, you need to take extra time if you’re not finding anything.

Why You Need an Experienced Trademark Attorney to Run a Trademark Search

Now, I know it sounds extraordinarily self-serving for an attorney that does trademarks for a living to say this, but over the last 11 years as I’ve run my law practice, the vast majority of the clients that have been sued for trademark infringement never did a proper clearance search or got an opinion from an attorney. So, if you’ve selected your name and haven’t run a proper search on it, you could get sued for trademark infringement and never have seen it coming.

Our firm uses a professional grade software and trademark searchers that have spent the last 10 years doing these types of searches. When you combine the skill of a searcher and the skill of a software, you can get an incredibly accurate report and view of all potential issues with a trademark.

Running a proper trademark search costs more than using a free online tool, but it can save you hundreds of thousands of dollars in the long-term if you were to need a rebrand or to defend your company from a trademark lawsuit.

Doing a trademark search on your own is a lot like going to WebMD and making a self diagnosis. Yes, sometimes you might get an idea of what’s wrong with you, but unless you go to the doctor, you really don’t know what’s going on under the hood.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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