Do I need a trademark search?
Clients often ask whether they should conduct a trademark search before selecting or adopting a new brand name. The answer is usually yes. Read on to learn trademark search basics, and why it is a best practice to have an attorney obtain and review a comprehensive trademark search.
What is the Purpose of a Trademark Search?
The purpose of a trademark search is to determine whether use of a mark for particular goods or services is likely to create a risk of infringing someone else’s trademark rights. A trademark search also helps to determine whether the proposed mark can be registered as a trademark with the United States Patent and Trademark Office. Foreign searches can also be conducted to determine the risk of adoption and ability to register a mark in a country outside the United States.
The best practice is to have a qualified vendor conduct a full (comprehensive) trademark search, and have an experienced attorney prepare an opinion letter. While searching is more of an art than a science and there are no guarantees every use will be found, qualified vendor searches are the “gold standard” for risk evaluation and mitigation. Trained searchers know how to look for phonetically similar marks that most people won’t be able to find if they search themselves. Vendor searches also include “common law” sources beyond the web such as social media, trade directories and databases like Nexis. They often disclose small uses that may not appear in the first page or two of Google search results.
What Are the Benefits of An Attorney Opinion?
When the vendor competes its search, an experienced trademark attorney should review it and provide an opinion on the availability of the mark for use and registration. The advice can be informal or formal, depending on the client’s needs. If there is a claim of infringement, an attorney opinion letter can be important to show that the client was a good actor and did not adopt the mark in bad faith.
Can I Rely on a "Knock-out" or Screening Search?
Some clients, especially smaller businesses and startups, choose to forego a full search and rely on a web search they have conducted combined with a knock-out or “screening search” of United States Patent & Trademark (USPTO) records conducted by their counsel. These clients are making the determination that significant uses will likely turn up through those efforts. The risk is of this approach is that it is often an obscure, “below-the-radar” use that causes problems down the road when a business becomes successful, either by claiming your mark is infringing or restricting your ability to expand.