Building on a previous article about trademark searches, I elaborate on some of the new vendors and opportunities available to practitioners and their clients.
Trademark clients sometimes question the need for a trademark search and opinion, but the benefits far outweigh the costs, especially for newer search options.
A trademark search serves two critical functions: it helps determine whether a mark is likely to be registered by the United States Patent and Trademark Office (USPTO) for particular goods or services, and it helps determine whether use of the mark is likely to create a risk of infringing someone else’s trademark rights. Conducting a search is more of an art than a science, and while no search is infallible, a paid search is likely to be more effective than a do-it-yourself Google search.
There are generally two types of trademark searches available:
1. Preliminary search, also known as a “knockout” or “clearance” search
The purpose of a preliminary search is to find out whether an identical or nearly identical registration is likely to block use or registration of the proposed mark. A preliminary search is usually limited to the Principal Register of the USPTO. If an obvious conflict is detected, there's usually no point in proceeding with the mark.
2. Comprehensive search
A comprehensive search has a greater scope and more detailed analysis. Traditional comprehensive searches are manually conducted by trained searchers working for specialized companies. The searcher enters various permutations of the mark including alternate spellings, phonetic substitutions and wildcards to generate potential hits — and then manually reviews them and prepares a comprehensive list of potentially relevant marks. Trademark counsel reviews that list, identifies the most relevant hits, and prepares an opinion. Comprehensive searches usually include the Supplemental Register as well as “common law” sources like state trademark databases, business directories, web pages, social media posts and domain name registrations. Traditional comprehensive searches also include news databases.
In recent years, technology has cleared the way for new vendors in the trademark search space. These services use artificial intelligence to perform knockout and comprehensive searches. Some include the Supplemental Register, online common law sources like web pages, and business directories. Our firm has been testing these services and so far the reviews are positive. Importantly, the pricing makes these options more economical.
In addition to conducting a search, we recommend having an attorney review the search and provide an opinion for two important reasons. First, an attorney can help interpret the results and provide advice based on experience. Second, in the event of litigation over the mark, an attorney opinion regarding a comprehensive search can help overcome a claim of bad faith. For this reason, a comprehensive search and attorney opinion remain a best practice.
For more information about trademark searches, contact us.
Nancy J. Mertzel
Mertzel Law PLLC
5 Penn Plaza, 19th Floor
New York, NY 10001