Trademark Searches: What You Should Know
Conducting a trademark search is a critical but often overlooked step in the process of securing Intellectual Property (IP) protection for your brand. In this post, you will learn the basics of what trademark searching is and why it can help avoid problematic and potentially catastrophic outcomes for your business.
What is a trademark search?
A trademark search is a preliminary review of what marks are already in use and which of those marks already in use have been registered with the United States Patent and Trademark Office (the “Trademark Office”). There are multiple ways to conduct a search, including a review of the Trademark Office database and examination of internet search results. Trademark searches can also be done internationally and can include state-specific trademark database results. For the purposes of this article, we will explore two of the more common types of searches: the trademark “knockout” search and comprehensive trademark search.
A knockout search is the less extensive of the two search options, provides less information, and is less expensive. A knockout search is carried out by searching the Trademark Office database for marks that have already been registered or applied for and are either identical or very similar to your proposed mark. This type of search may inform you if there are any obvious marks that might lead to your application being rejected by the Trademark Office but may be less helpful in reducing your overall risk as a comprehensive search.
A comprehensive search generally gives much more information than a knockout search, but the cost is higher. Like the knockout search, a comprehensive search will involve reviewing the Trademark Office database for similar marks, but the scope of the search terms will be much broader. Comprehensive searches may also cover additional databases maintained and reviewed by private search firms that have access to information about businesses that will not show up in a search of the Trademark Office database. For these reasons, a comprehensive search is usually the better choice when you are trying to assess the risks involved in not only applying for registration with the Trademark Office, but also using your proposed mark.
Why are trademark searches important?
The purpose of a trademark search is to assess and reduce risk, and risk may come in multiple forms. One of the potential problems that can arise when you file a trademark application is that your mark could get rejected based on a likelihood of confusion with an existing mark. If your proposed mark is too similar to an existing registration or application, your application will be refused. If that happens, you will not only lose the costs of filing your application, but also several months of precious time (for more on the trademark application timeline, please read our earlier post, “Trademark Application: A Step-by-Step Look at the US Trademark Process.”
Actually, using a mark without conducting a comprehensive trademark search can be even more problematic and potentially catastrophic for your business. Without conducting a comprehensive trademark search, you may have no idea whether another business is already using the mark you want or if that mark is already registered. If you begin using a mark already registered or used by another business, you might get a cease and desist letter. This can leave you with little choice other than to stop manufacturing, recall products, and cancel any advertisements using the mark you have chosen. Additionally, if the existing mark user determines you have infringed their mark, you could be sued for trademark infringement. Hence, failure to conduct a trademark search before using a mark can lead to significant business and legal costs.
Conclusion
Trademark searches are an extremely important part of building your business’s IP. Without a search, your trademark application could be rejected, costing you time and money. You could also receive a cease and desist letter from an existing business, or you might face a trademark infringement suit. These risks can never be fully eliminated, but conducting a trademark search can greatly reduce them. If you have any questions about trademark searches, or any other trademark matter, please don’t hesitate to reach out to the firm using the forms below!
Written by Benjamin Rothermel and Connor Jaccard.