Before you even begin drafting a trademark application, there’s a crucial step that needs to first take place: a trademark search. While some applicants may believe their path to a registration is clear simply because a quick search of the United States Patent and Trademark Office’s database did not show any trademarks that conflict with theirs, this is unfortunately not the case. The USPTO issues refusals for similarity, or likelihood of confusion, for a variety of complex reasons that a quick register search is not able to catch. In order to fully capture the needed information and variables that may bar your trademark from registering, a search must first be done. A comprehensive trademark search, which refers to any action taken to determine whether a trademark is already used in commerce, also evaluates the likelihood of the proposed trademark obtaining a registration by examining marks already in use in the marketplace.
The most well-rounded of these searches must be done with the assistance of legal counsel, as they have access to powerful search engines capable of searching for trademarks due to appearance, phonetic similarities, and more. At Gerben Intellectual Property, we use a powerful search engine software called Corsearch to perform our searches and to ensure clients are receiving comprehensive results and to confirm that no pre-existing trademarks could hinder their application process. Following the search, the client will receive an opinion letter from an attorney analyzing the results; these search results essentially guide the rest of the application process and ultimately determine the final trademark that will be filed.
What are the different types of searches?
There are three main types of searches that need to be performed in order to have a truly thorough idea of the risk surrounding your proposed trademark: federal, state, and common law.
- A federal trademark search, which is also known as a USPTO database search, examines the register of existing trademarks for any marks that may conflict with yours. The software or search engine used will examine different factors such as spelling, pronunciation, foreign language equivalents, and much more. Because these searches are quite intricate and in-depth, they typically take several hours to complete.
- A state trademark search will examine the trademark database for each of the fifty states. This is often where local businesses tend to file for trademarks, especially those regionally situated that do not feel the need for a federal registration. Despite their lack of a federal registration, these marks still carry trademark rights, most notably through prior use in commerce, and can enforce those rights should they feel threatened by your application for a similar mark.
- A common law trademark search differs from the aforementioned types of searches in that it does not look through a registered list or database; rather, this search attempts to find unregistered but similar marks that may have been used prior to yours. Even though the user of that mark may not have a federal or state registration, they still have obtained certain trademark rights through their use of the mark and can be an issue for your application moving forward.
Learn more about the 3 types of searches that are necessary here. Want to learn more about how to do USPTO searches? Read our detailed post here.
Why are searches helpful in the trademark registration process?
The biggest advantage to a trademark search, especially for a new company or brand, is that it provides clarity regarding the uniqueness of your trademark. When looking to turn your name, logo, or symbol into a registered mark, the federal government compares it to a registry of already established trademarks and may reject yours based upon being too similar to a mark already in existence. By performing a preliminary trademark search, you are able to establish that your brand is unique enough to be a registered trademark. If the search returns several established marks similar to yours, then you can make the needed changes and proceed with the edited mark.
If the search had not been done prior, the examining attorney at the USPTO would have issued a rejection in the form of an Office action, inevitably prolonging the application process even further. This saves the trademark owner both time and money, allowing them to go back to the drawing board before their application is filed.
Overall, trademark searches are critical for new brands and companies in order to minimize any future obstacles that may stand in the way of their growth, and the help of a professional legal team statistically improves their chance of success. If you are interested in having a comprehensive search done for your trademark, please contact an attorney at Gerben Intellectual Property for a complimentary consultation.