Understanding Your Trademark Search Report

Now that you have a trademark search report, you should review the report and determine if your proposed trademark will conflict with an existing trademark.
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by | Last updated May 20, 2019 | Published on Jan 25, 2016 | Intellectual Property Law

The first step you should take before registering your trademark with the United States Patent Office is to conduct a thorough trademark search.

This ensures that no one else already owns the rights to a trademark that might conflict with your own. Once this is completed, you should be provided with a trademark search report.

As an entrepreneur or independent small business owner you may be capable of conducting this search on your own, but to ensure that the results of your search are accurate and that you won’t be accidentally infringing on someone else’s intellectual property rights, you should consider discussing the results of your search with a trademark attorney.

Once the search has been conducted, usually by a private service that specializes in these searches, you should be provided with a report on the findings of the search.

Understanding this report is imperative to the success of your trademark registration. In the event that your trademark infringes on the rights of another you may be barred from registration, or if you use a pre-existing mark you may be liable for damages to the priority trademark owner.

Preliminary Screening Search

Usually before a full trademark search takes place, a preliminary screening search is conducted. This is sometimes called a knockout or exact search.[1]

The preliminary search is limited to federal trademark registrations and pending applications and usually only seeks to identify exact (or almost exact) versions of the trademark you want to check the availability for.

This is only a preliminary measure intended to save time and money by knocking out any trademark possibilities that would clearly infringe on a previously registered or pending trademark.

To conduct a “knock-out” search, you should visit the USPTO’s search tool.

Full or Comprehensive Search

A full search is sometimes called a comprehensive search and, as the name implies, is intended to identify all trademarks that could pose a conflict with the one you hope to register. This search, conducted by a professional service, will typically cost between $200 and $400 and take about four or five days before you can obtain your search report.[2]

A full search includes a search of the federal trademark register, state trademark registrations in all fifty states and a common law search of unregistered uses and listings.

This search locates all trademarks that are identical to your proposed trademark as well as similar variations that could be confusing for potential customers or clients.

Federal Trademark Register

The United States Patent and Trademark Office provides a Trademark Electronic Search System to help potential registrants search for registered and pending trademarks on file with the federal government.

As previously mentioned, you may be capable of using this software effectively for your needs, but it would be very wise to seek help from a trademark lawyer. To effectively use this software you should have an understanding of what is included in the database, how to conduct a proper search, and how to interpret the results.

The Patent and Trademark Office provides tips and advice for using the search system, but this should not be considered an easy guide guaranteeing effective trademark searching.

State Trademark Registrations

As another indispensable portion of a comprehensive trademark search, trademark registrations in all fifty states and Puerto Rico must be checked for potential conflicts with your newly proposed trademark.

The Patent and Trademark Office provides a list of online databases for state trademark information listed by state.

Common Law Search

Federal registration is not required for a person or business to claim rights to a trademark. For this reason, a search for common law trademarks must be conducted to ensure that no one is already using your proposed trademark.

There are several online services for conducting this portion of the search. The goal of the search is to find trademarks in use that might have cornered the market on your proposed trademark.

Follow-up Investigation

If the search reveals a trademark that may conflict with yours, it usually requires further investigation to determine whether the trademark is actively in use and to confirm that the trademark is used for a similar category of goods or services as your proposed trademark.[3]

The scope of the follow-up may only require a simple phone call to the business using the trademark. In other cases you might hire some kind of investigative service to discover the uses of a trademark.

Sometimes a follow-up investigation will reveal that your use for the trademark would not infringe on the current owner’s rights. Other times, you may need to confer with the owner to buy the rights or seek a signed statement that you will not be challenged for using the mark.

In many cases, a trademark attorney might advise you about your business and brand name and discuss the cost-benefit analysis of changing your name and rebranding your business.

Other Complications

Even a comprehensive trademark search with all the recommended steps does not guarantee that your proposed mark will be available for you to register. Pending applications, foreign trademarks and common law uses may remain undetected in an otherwise complete and thorough search.

A comprehensive search may reveal that your proposed trademark is non-registrable. Additionally, names that are generic, merely descriptive or primarily used as a surname are often non-registrable.

What to Do with Your Trademark Search Report

An ideal trademark search report will show that you are free and clear to pursue registration of your new trademark. But if you’re not sure whether a trademark search report is telling you, talk it over with an attorney.

A successfully completed trademark search puts you well on your way to registering a trademark, but legal advice is the only way to ensure that you will be protected and able to legally maintain the rights to your mark.

[1] John Zaccaria, Esq., Trademark Clearance Searches, 33 Westchester B.J. 87 (2006).

[2] Lawrence A. Waks & Brad L. Whitlock, Trademark search—Federal search, 3 Tex. Prac. Guide Bus. Trans § 16:23 (2015).

[3] Zaccaria, supra note 1.

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Jacob Tingen

Jacob graduated from the University of Richmond School of Law and was accepted to the Virginia Bar in 2012. Less than 30 days after being admitted to the bar, Jacob launched his own legal practice. Read More.

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