TM Searches

THE TRADEMARK SEARCHING PROCESS

It is always a good idea to conduct a search for at least federal applications and registrations prior to adopting and using a trademark. For one thing, if you file an application for a mark and there is a prior pending application or registration, the PTO may refuse to register your application and you would end up losing all of the fees you have invested in the applicaton.

Aside from that, each state has its own trademark registration system independent of the federal system. Further, there are millions of businesses that never register their marks at all. While the PTO will not search or cite state or unregistered marks against your application, the existence of these marks could pose a problem with your RIGHT TO USE your mark in geographic areas where these prior users have established a market. IT WILL NOT MATTER WHETHER YOU ULTIMATELY RECEIVE A FEDERAL TRADEMARK REGISTRATION. Prior users cannot be stopped from using the mark in areas where they have established themselves prior to the filing of your federal trademark application although federal registration could keep them from expanding their use of the mark beyond that area. What’s more, such users could keep you out of their established geographic market even if you obtain a federal registration. If their market area is large, such as 27 states, then your federal registration will be significantly limited in value.

TYPES OF SEARCHES AND STANDARDS APPLIED

There are numerous websites that allow you to conduct your own searches either for free or for a nominal fee. Even the PTO website has a search feature. However, in many cases, they will simply provide you raw data or results, but they will not help you interpret the results. Unless the results are analyzed by an experienced trademark attorney, you could miss a critical problem.

Another common misbelief is that as long as the marks are not identical, then there is no problem. Many people confuse a trademark search with that of a search for corporate or business name filings with a state office which registers such names. In most cases with corporate or business entity name registrations with a state, the standard applied is generally an exact identity standard. That is, any minor difference in spelling will be allowed. THAT STANDARD DOES NOT APPLY TO TRADEMARKS.

Marks can be confusingly similar if they sound alike, i.e., EXXON vs. X-ON, or if the designs or marks look highly similar, or if the marks simply have similar meanings or commercial impressions even though the marks are spelled and sound differently. Examples of real cases include CYCLONE and TORNADO for fences; TUNA O’ THE FARM for canned chicken and CHICKEN OF THE SEA for canned tuna; PROMISE for furniture polish and PLEDGE for furniture polish.

Neither do the goods or services of the parties have to be identical in order for marks to be refused registration by the PTO or found to be infringing by a court. The goods and services only need to be of the type commonly expected by consumers to originate from a common source or sold through the same or similar retail or wholesale channels of trade. The more closely related the goods and services of the parties are, the less similar the marks have to be in order for there to be a problem.

For example, a brand name for a line of clothing could be confusingly similar to a retail clothing store; the name of a food product could be confusingly similar to a restaurant; or the mark for a watch could be confusingly similar to a mark for a handbag.

WHAT WE OFFER

We can order, review and analyze full availability searches usually in about a week. These are the best kind of searches to run because they reveal not only federal trademark applications and registrations, but also registrations with every state trademark office as well as unregistered common law marks to a reasonably certain extent. These searches will also include Internet domain name registrations. A full availability search can be ordered on an expedited basis, however, the costs we pay to the search company who compiles the data, as well as our fees for analyzing the data, are more expensive.

We can also perform preliminary searches and analyze federal and/or state registrations on a more expedited basis and for a lower cost. Such searches could be used to determine whether it is worth pursuing a full availability search. If you decide to take a chance and file an application based on a preliminary search, BE AWARE THAT IT WILL NOT FIND UNREGISTERED COMMON LAW MARKS AND SUCH MARKS COULD INTERFERE WITH YOUR RIGHT TO USE YOUR MARK.