When we run a comprehensive trademark search for you, our attorneys provide a risk analysis report based on federal, state and common law levels. This article provides an overview of what each trademark search covers, as well as the meaning of the risk analysis our attorneys have provided.
Federal Trademark Searches
Federal trademark registrations are perhaps the most important search to perform. These are trademarks that have either been filed or registered with the USPTO that are similar to your trademark.
With the risk analysis here, we are trying to predict whether or not the USPTO will refuse your trademark application due to a prior filed or registered trademark. If the risk level is moderate or below, in most cases, these trademarks are going to be accepted by the USPTO. Once we get to a risk level that is moderate to high or high, we are much more concerned about receiving an initial refusal from the USPTO. If you have flexibility in your name, it may be time to think about some sort of revision. However, keep in mind, getting a refusal is not the end of the world. There are things we can do if a refusal were to be issued, and we can talk about those should you need to proceed with your application.
State Trademark Searches
A state-based registration is not going to prevent the government from approving your application. What it could do is if you move into a particular state, the owner of a state-based registration could try to block your ability to move into that state, even if you have a federal trademark registration.
In addition, should that state-based trademark owner ever try to register their trademark federally and come across your application or registration, they could try to cancel your trademark on grounds that they used the trademark first. Your trademark will be subject to this type of cancellation for the first 5 years that it is registered.
Common Law Trademark Searches
A common law trademark is use of a trademark that is similar to yours in the marketplace. Again, while these trademarks will not cause the refusal of your application by the USPTO, they could be a long-term issue.
Much like a state registration, if somebody has been using a trademark in a local geographic area and you were to move into that area, they cold have a legitimate way of legally blocking your business’ expansion into the zone that they have already created for their particular brand.
Perhaps more troubling, is that if somebody has been using a trademark in the marketplace, they can still petition to cancel any registration that our firm gets for up to the first 5 years that you have your trademark registration. Therefore, we pay close attention to both state and common law trademarks because they can be a little bit like a time bomb.
We can get your registration, but down the line, these folks may be able to challenge your registration and get it canceled. However, the good news is that the owners of state and common law trademarks rarely institute these types of proceedings. Keep in mind, these are folks that have not tried to get a federal trademark registered themselves and may never try to do so. It is just a small percentage of the time that these things do become problems and we want to ensure that you are aware of them at this stage of the process.
If you have any further questions about your trademark search report, please reach out to one of attorneys.