Why is a trademark search essential?
Filing a trademark application without a search of the mark could put your company on the radar screen of another company that has greater rights to the mark. For example, perhaps your company’s name is Xorox and it sells facsimile machines. If you filed a trademark application for this mark without discovering the trademark registration(s) for XEROX, the wrath of Xerox®’s trademark attorneys may be sent to your company in the form of a cease and desist letter and perhaps in the form of a lawsuit.
While almost everyone knows Xerox® is a trademark owned by the corporation that sells copiers, many federal registrations of marks exist for lesser known products and services and the owners of these registrations may be every bit as serious about protecting their trademarks as the attorneys for Xerox® would be.
Why should you use a trademark attorney to conduct your search?
Attorneys will always recommend that an attorney handle a business’s legal matters. But, this is not just a symptom attorneys looking out for each other. The old adage that “a person that represents himself/themselves has a fool for a client” is backed up by countless horror stories of businesses not using attorneys for legal work. In addition, cleaning up messes created by self-taught “lawyers” almost always costs more than it would have cost to have an actual attorney do the work in the first place.
For trademark searches in particular, a trademark attorney can assess the likelihood that your company’s mark will receive an initial refusal by the examining attorney at the United States Patent and Trademark Office (“USPTO”) based on the mark being confusingly similar to a registration or a prior application. In addition, the trademark attorney can advise the client that it may be subject to a trademark infringement lawsuit by the owner of a registration or previously filed application. Therefore, instead of coming to the attorney with an initial refusal or a cease and desist letter, a company that uses a trademark attorney can make an educated decision about whether to adopt a mark or file a trademark application for it early in the process and save itself time, money and headaches.
What type of trademark search should you conduct?
Searches come in two forms. The search that most small businesses and entrepreneurs order is a search of the USPTO records. This search is designed to eliminate the problem discussed above in which the company filing the trademark application receives an initial refusal or an adverse action in the form of a letter or lawsuit by an owner of a trademark registration or a previously filed application. It is the fastest and less expensive option for companies.
However, just because your company’s mark appears to be clear for registration based on a search of the USPTO records, there may be other problems lurking. If you are more risk adverse or if you product rollout is going to be a costly one, a more thorough search may be appropriate. This is called a full availability search.
Some trademark rights come from simply using a mark. So, a search of the USPTO records alone will not catch those businesses that have been using a trademark but never filed an application. For example, if your company files a trademark application for the mark TWEET for restaurant services, you cannot stop Mom and Pop from operating its restaurant TWEET established in 1971 in Warrenton, Georgia. If your company were to expand to that area, it would either have to purchase the mark from Mom and Pop or operate under a different name. And, if Mom and Pop somehow got wind of the fact that you filed a trademark application for TWEET, they might have grounds to oppose that application or even cancel a newly issued registration.
For this reason, businesses will order a full availability search. These searches are conducted by companies that specialize in such searching. These companies use complicated algorithms to break the mark into pieces and search various permutations of the mark in a variety of places (including, the internet, corporate names, phone books, etc.). The trademark attorney then reviews the search results to determine if any existing uses of the mark pose a threat to the client’s adoption or expansion plans and advises its client accordingly. While the full availability search is more expensive, it is far more comprehensive and has a greater capacity to find all of the potentially conflicting marks.
Whether your company needs a full availability search or simply a search of the USPTO records, have your trademark attorney conduct one before adopting a mark or filing a trademark application to avoid needless pitfalls.