Trademark Searching – An Ounce of Prevention

     The process of creating a new brand is exciting.  Maybe the word or phrase immediately jumped to mind as the perfect way to identify your product or service.  Or maybe you spent hours brainstorming to find just the right word or phrase to embody your brand.  Now you are ready to launch, right? 
     “Hold on,” your attorney tells you, “we should do some trademark searching first.”  What is a trademark search, and why should you do it?
     A trademark search is the process of gathering and evaluating information to assess two different aspects of a trademark: 

1. its availability for your adoption and use without risk of infringing someone else’s rights (your right to use it), and
2. its protectability under trademark laws (your right to prevent others from using it).

Trademark searching can also illuminate other aspects or trends surrounding a particular term or phrase, which can be useful in refining your branding strategy.

Availability
     Trademark searching is important to see whether your proposed mark might infringe someone else’s rights.  If the search uncovers a company that already uses or has a registration for that trademark, you can avoid potential lawsuits by choosing a different trademark before you hit the market.  Searching can also illuminate a trademark owner’s policing strategy.  If a company consistently enforces their trademark rights by opposing registration of similar marks and/or filing lawsuits to stop others from using confusingly similar marks, this can be a clear signal that you should avoid adopting a trademark that could be considered similar to theirs.

Protectability
     Trademark searching can provide valuable information regarding whether your mark may be protectable through registration in your jurisdiction.  A U.S. federal trademark registration gives you the ability to prevent others from using marks that are confusingly similar to your mark and is thus a valuable tool to protect your brand name.
     Trademark searching can uncover trends within the U.S. Patent and Trademark Office (USPTO) that may impact whether your proposed trademark might be registrable.  For example, if the USPTO is refusing registration of similar marks based on a common theme (for example, because it has concluded that a term is merely descriptive and therefore not eligible for registration), you can expect a similar approach may be taken in your case.  If trademark registration is important to you, then you can use this information to refine your mark.
     By conducting trademark searches, you can, in the long run, avoid investing in building brand identity in a trademark that is later objected to by another party, or refused registration by the USPTO.

How are trademark searches conducted?
     If you type “trademark search” into an Internet search engine, you will find several companies that offer trademark searching services.  However, here are two important things to remember:

• Not all searching is equal, and
• The devil is in the details.

     Trademark searches should be tailored to your specific needs as a business owner.  Beware of a one-size-fits-all approach to searching.  Typically, a trademark search begins with a review of the trademarks recorded in the register of the jurisdiction at issue (such as the USPTO).  Other possible parameters for a trademark search include:

• State trademark registers (which can be maintained by the Secretary of State or similar entity within each state);
• Any foreign countries in which you might sell products or services in connection with the mark;
• Phonetic equivalents and/or plural versions of your mark;
• The goods or services with which you will use the mark; and
• The International Class that envelopes those goods/services (your attorney will determine this).

     In many countries, trademark rights are established by the first party to use a mark commercially, regardless of whether the mark is registered.  These are referred to as “common law” trademark rights.  Therefore, searching may include looking for such common law rights, which can be found on the Internet, in published articles, as part of business names, and the like.  Trademark searches that include this level of detail are often referred to as “comprehensive” or “full availability” searches.
   Typically, searching can be done in two stages.  The first stage can be referred to as a “knock-out” search, and it often involves searching trademark registers for identical (or near identical) marks.  If a mark passes the “knock-out” stage, a more comprehensive trademark search can take a deeper dive to determine whether there are potential issues with your use and/or registration of the mark.

Where to start?
     While you can do some initial investigating to determine whether others are using a particular brand name, it is important to hire a trademark attorney to conduct your trademark searching and clearance.  An experienced trademark attorney can conduct a search that meets your needs and analyze the results for you.

   The following information is important to provide to your trademark attorney:

• A listing of 3-5 proposed trademarks (this will assist with the knock-out phase of searching);
• A complete description of the goods and/or services you will use in connection with the mark (include those you will use within the next 1-2 years);
• A description of any meaning behind the trademark;
• Whether the mark includes any design feature (a logo), stylized fonts, or a combination of these.

     This information will assist your attorney in conducting an efficient and thorough trademark search.  If you have any budgetary constraints, let your attorney know that too.  Typically, the more comprehensive the search, the more expensive it will be.  Similarly, if you want your attorney to review the results in detail, this will involve more time and expense.
     While it can be tempting to jump right in with a new trademark and begin using it with your product or service, it is important to vet that trademark before you adopt it.  It is much more difficult to change the brand name after product launch than to spend some time upfront to make sure the trademark is clear for your adoption, use and/or registration.
     Still have questions about trademarks?  See some of  my other trademark blogs or feel free to contact me.