Perhaps you have developed a new name or tagline that you really like and think is just perfect for a particular product or service that you intend to offer. If so, it is absolutely essential that you perform a trademark search to make sure that your name or tagline is available for your exclusive use throughout the United States. A trademark search also helps to minimize the risk of being sued for trademark infringement by someone who might own prior rights in an identical or confusingly similar trademark.
Although there are a few different types of trademark searches, the federal trademark search is by far the most important for start-up, small, and medium-sized businesses. It is relatively inexpensive and will uncover whether anyone owns broad federal rights in a trademark that is too close to the one you want to use. A federal trademark search also provides the most guidance regarding whether your trademark is eligible for registration with the United States Patent and Trademark Office. If the search reveals a pending application or existing registration for a trademark that is confusingly similar to yours, then it might be in your best interest to come up with a different trademark so as to avoid a potential lawsuit and maybe having to change your trademark in the future.
In a perfect world, everyone would conduct a trademark search prior to adopting and using a particular trademark. It would drastically reduce the number of trademark infringement lawsuits that are filed every year and would help businesses avoid the devastating and costly effects of losing an infringement lawsuit and having to change their trademark. But, the reality is that there are thousands of businesses and organizations throughout the United States that have been using their trademarks for many years that never performed a trademark search. In many cases, these businesses have grown quite substantial and have now decided that they want to federally register their trademarks.
Let’s say that you fall into the category of businesses described above. In that case, you wouldn’t be conducting a federal trademark search to clear your mark from a use perspective. You’ve already been using it and it is unlikely that you would change your trademark even if the search revealed that someone else was using an identical or similar mark first. Rather, you would probably only want to know whether your trademark is eligible for federal registration. An exhaustive federal search of the Trademark Office’s records would provide you with that information and would let you know whether filing a trademark application would be a waste of money or not.
Fortunately, you can conduct a basic trademark search on the Trademark Office’s website. This is often called a “knockout” search because it will uncover very obvious conflicts that an experienced trademark attorney would find very quickly. However, this is not a substitute for a comprehensive federal search because the limited functionality of the Trademark Office’s electronic search system will not disclose all potentially conflicting marks.
After you complete your “knockout” search, you should hire a trademark attorney to conduct a more robust federal trademark search prior to adopting, using, or attempting to register your trademark. A knowledgeable and trustworthy trademark attorney will give you a legal opinion informing you of the risks associated with using and registering your trademark, and you’ll be able to sleep at night knowing your trademark search was thorough and complete.
If you have any questions about why performing a trademark search is so important to the successful clearance and ownership of your trademark, please contact me right away for your free consultation. I look forward to hearing from you soon.