Trademark Searches

Before filing a trademark application, there is an important step that needs to be taken to ensure the application will not be subjected to a quick denial. That step is conducting a comprehensive trademark search.

Conducting a comprehensive search is necessary because failing to do so could risk your application being denied by the United States Patent and Trademark Office (USPTO). Some trademark applicants mistakenly believe their chances of securing a trademark will be a breeze because they completed a quick search of the USPTO database and did not discover any conflicting or problematic trademarks. In reality, the USPTO often denies applications based on similarity, the potential for confusion, or for a host of other reasons that may not become evident when conducting a cursory search.

A thorough trademark search will include steps necessary to determine whether the trademark is being used in commerce and examining trademarks already in use in the marketplace. There are three searches that could be performed to have an accurate assessment of the risk surrounding your potential trademark:

• Federal search
• State search
• Common law

A federal trademark search, commonly referred to 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, including:

• Spelling
• Pronunciation
• Foreign language equivalents
• Goods and services offered under the mark

Federal trademark searches can be quite intricate and in-depth. As a result, it is quite common for a thorough search to take multiple hours to complete properly.

Once the federal trademark search is complete, the next step is conducting a state trademark search. This search will examine the trademark databases in each state across the country. This is necessary because many small businesses tend to file on the state-level for trademarks, especially those regionally situated that do not feel the need to go through the federal trademark registration process. Despite the lack of a federal registration, these marks still carry trademark rights, especially through prior use in commerce. It is also necessary because state registrants can enforce their rights should they feel threatened by your application for a similar trademark.

Finally, a common law trademark search can be conducted. This type of search is somewhat unique in that it attempts to find unregistered, but similar, marks that may have been used prior to your mark. 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 could present an issue for your application to move forward in the process.

If you want to ensure your trademark search is sufficiently thorough and detailed, you should retain the services of an experienced trademark lawyer. A trademark lawyer has access to powerful search engines capable of searching for trademarks due to appearance, phonetic similarities, and other characteristics. In addition, once an attorney completes a search, they will typically draft a letter or summary analyzing the results to help you assess whether it makes sense to move forward.

As you can see, a thorough trademark search is essential, especially for start-ups and fledgling brands. If you are interested in having a comprehensive search done on your behalf, contact the highly reputable Omni Legal Group for expert guidance and research, to properly help you take the next step in your business. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.