Clients often ask whether they should conduct a trademark search before selecting or adopting a new brand name. The answer is usually yes. This post will explain trademark search basics, and why it is generally a good idea 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.
What is a Preliminary or Knockout Trademark Search?
Some clients, especially smaller businesses and startups, choose to forego a full search and rely on a preliminary or “knockout search” of United States Patent & Trademark (USPTO) records conducted by their counsel in combination with a quick Google search. We frequently conduct these searches before obtaining a full search to eliminate marks that are likely to be blocked by other registrations or obvious uses. A comprehensive search (described above) is the "gold standard," because it is often an obscure, below-the-radar user that leads to problems later, either by filing an unexpected opposition, claiming infringement, or restricting the ability to expand. Nevertheless, some clients elect to forego a full search and rely solely on a knockout search.