Many companies make the mistake of beginning use of a trademark before doing a trademark search. Similarly, many apply to register a trademark for their brands only to have the U.S. Patent and Trademark Office (USPTO) reject it due to the existence of a similar trademark.
Before beginning use of a trademark or filing a trademark application, you should do a trademark search. This one simple step can save time, money, and potential litigation. As such, we almost always recommend a trademark search as the first step toward securing trademark rights.
Conducting a Trademark Search
Generally the trademark search process is far more than a cursory search. Since you may not know all of the search terms you should use to best protect your trademark rights, in addition to doing a search yourself you should hire an experienced trademark attorney to do a trademark search as well.
We have assisted clients with over 1000 trademark applications, and this includes conducting careful searches and analysis of how to register a trademark considering those already registered. This can include federally registered trademarks and even non-registered common law trademarks. These extensive searches not only help ensure the approval of your trademark registration but also can identify any possible liability issues or legal actions that may result from your trademark use.
An adequate trademark search, analysis, and comparison of trademarks can take time, and often business owners miss important existing trademarks despite believing they conducted sufficient searches. By conducting a thorough search before filing a trademark application, you may prevent the rejection of your application based on an existing trademark.
Trademark Rejection Due to Likelihood of Consumer Confusion
When you apply for trademark protection, you want to seek the broadest scope of protection possible. However, each new trademark must be unique enough so that it is not likely to be confused with prior or pending registrations. If a trademark search results in the discovery of a similar registered trademark, your chances of trademark registration do not end. Instead, we understand how to tweak your trademark application to allow you to obtain registration while limiting the chance of infringement. Sometimes, simple adjustments can mean the difference between a registration approval and rejection.
In addition, even if a similar trademark exists, your own use and registration may not infringe on that owner’s rights in certain situations. For example, if your trademark use is not similar enough to cause a likelihood of confusion among consumers, our trademark attorneys may defend your trademark use and ownership rights. This is a case-by-case analysis and we will defend your trademark rights to the fullest extent under the law.
Trademark Search Attorney
Conducting a trademark search can be a critical preliminary step to filing a trademark application. If you want to discuss trademark registration or have questions or concerns regarding a trademark search, please contact us.