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Trademark Searching (United States) |
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1. What is a trademark search?A trademark search is a review of various publicly available information and occasionally trade information, designed to determine whether a particular trademark is (a) available for use without serious risk of infringement of the rights of a prior user, and (b) available for registration, referring to the criteria for registrable trademarks under U.S. laws.2. Why should I conduct a trademark search?Searching first helps to ensure that the use of any trademark will not infringe the rights of another party, and thus reduces the risk of any challenge or lawsuit from the owner of prior rights in a trademark or trade name. Searching will also help to determine if you can register your trademark, by considering both whether there are prior confusing applications or registrations that might block your application, and whether there is a trend, visible from marks registered with the U.S. Patent and Trademark Office (USPTO), suggesting that certain words will not be acceptable trademarks. By conducting searches, you will, in the long run, avoid expenditures where marks are not available, reduce the risks of being sued, and possibly be able to draft the application to avoid objections based on potential obstacles identified by the searches.Assessing both the registrability and the availability for use of a mark will also help to determine the overall picture of the commercial environment surrounding a proposed mark. For example, even though a mark may be available for use and/or registration, it may be a weak mark owing to the popularity of other, similar marks. The more unique the mark, the stronger the mark will be and the easier (and, therefore, less expensive) the mark will be both to register and to assert and defend against other marks.3. What information is needed to conduct a search?The usefulness of a search will depend upon the specific criteria considered. The following factors should be taken into account in a search:
a. The nature of the specific trademark. Is it a word, a logo, in stylized script, or a combination of features?
b. If the word is not an ordinary English-language word, its origin and meaning.
c. If the mark includes an acronym, what the acronym stands for.
d. Examples of the way in which the trademark will be used, if available.
e. A complete list of goods or services on or in connection with which the trademark will be used.
f. Any budgetary constraints. There are many resources that can be searched; the more detailed the review, the more reliable the search results will be. Of course, more searching may mean higher costs.
g. The deadline for the results. The scope of the search may affect timing. Also, it may be necessary to do follow-up investigations to assess the risk posed by specific trademarks noted on the search.
h. Directions regarding the level of review of the search results. This can range from a simple identification of relevant marks found in the search, to an evaluation of the results, to a formal legal opinion as to use and registrability.
4. How is a trademark search conducted?In the United States, searching is often a two-step process. This involves conducting a preliminary or “knock-out” search, followed by a “full” or comprehensive search.
a. Preliminary or “Knock-Out” Search. This is a review of trademarks recorded in the registers maintained by the USPTO and the various state trademark offices, to identify marks that are visually, phonetically, or conceptually the same as or very similar to the trademark that is to be adopted and that cover the same or similar goods or services. These sources can be accessed online. This search often is used when one must choose from a selection of possible alternatives, or if there are budgetary constraints.
Because trademark rights in the United States are established by the first party to use a mark commercially, regardless of whether the mark has been registered, it is also advisable to conduct a full search that also covers “common law” uses.
b. Full or Comprehensive Search. A full search will cover additional commercial and marketplace resources, such as the following:
i. Business/trade name databases;
ii. Domain name register searches;
iii. Trade directory databases;
iv. The Internet, including databases such as yahoo.com, google.com, and amazon.com;
v. Telephone directory databases;
vi. Financial status checks;
vii. Discreet market investigations.
viii. Copyright Office records.
These additional searches will, of course, increase the cost of obtaining a search report and opinion.The report should also analyze whether the trademark meets the criteria for registrability under U.S. laws. For example, is the mark too descriptive? Is it generic? Is there some other impediment to registration?There are several trademark search companies that can search all of the above resources. Most do not also provide an opinion on the use or registrability of the trademark. To properly analyze the search involves subjective decisions, as well as knowledge of trademark law and practice and industry trends. Professional advice is available from trademark attorneys.5. How do I know if a trademark is available?The standard for whether a mark is available for use and registration is whether the use of that mark is likely to cause confusion, in the mind of the average consumer, with a previously used or registered trademark or trade name. Similarly, a trademark must meet certain criteria for registration; for example, it cannot be merely descriptive, or a common name of a person or the wares.6. How much time should be allowed to conduct searches?Ideally, searching should commence well in advance of the product launch. A preliminary search should take a day or so, and a full search usually takes about one week. (For a premium price, full searches can be conducted in 24 to 48 hours). Additional time may be required if potentially confusing trademarks or trade names are to be investigated. If adverse results are received and alternative marks are then required to be cleared, more time will be required.7. What action is available if the results are adverse?Using a trademark that is confusing with trademarks or trade names noted on a search can result in a lawsuit alleging trademark infringement. Similarly, filing an application for registration of a trademark that is too close to a prior-registered trademark or previously filed application may result in the application’s being refused. It may be necessary to abandon the preferred mark and adopt an alternative. Before that, however, investigations can be made to determine whether any prior mark posing an obstacle is vulnerable to cancellation for lack of use. Alternatively, it might be possible to acquire the confusing mark, obtain consent to use and/or register your mark from the other trademark owner, or obtain a license to use the mark for specific goods or services. A trademark advisor can help determine the best alternative.This fact sheet is intended to provide general information on trademark searching alternatives and resources. Searching databases will differ around the world. Full advice on how to conduct or analyze a trademark should be sought from local trademark attorneys.
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