The Importance of a Comprehensive Trademark Search

Nearly every business uses a trademark, which is understandable considering without a trademark, the business, its goods, and its services would essentially be nameless. That is, if the business has a name, or it is calling goods and services by a unique identifier, then it also has a trademark. The trademark may simply be the name, or “word mark”, though it may consist of a design (a “design mark” often referred to as a “logo”) and may even comprise a combined name and design. Whether a word, design, or combination thereof, the identifier is commonly known as a “mark” or “trademark.”

The owner of the trademark is provided the rights to use that trademark within commerce to differentiate that business from others in similar industries. In this way, the trademark enhances brand recognition and builds customer trust. In other words, a trademark is often the better part of the goodwill associated with a good or service that not only keeps customers coming back, but is useful for attracting new customers. For trademarks, whether someone prefers McDonald’s or Burger King is not the issue; the issue is can the customer easily identify the brand they wish to purchase from? Trademarks make this possible and are valuable since when a business owner sells their mark, they are selling the valuable goodwill that comes along with it.

It is therefore worrying that a few businesses still use trademarks without first conducting a thorough search. What if another business has already registered, or is using, the trademark? This is a common occurrence and can place a business in a position of losing a mark that has been carefully fostered with substantial amounts of time, energy, and money.
Some believe they are performing an adequate search by conducting a quick check on the USPTO website and mistakenly considering it a “trademark search.” This can be just as dangerous as performing no search at all. Although such a search may be helpful in the pre-screening phase, a basic search will rarely unearth many potentially conflicting issues. Thus, relying on this type of “light” search can significantly increase exposure risk to future infringement lawsuits.

Another problem befalling new business owners is believing that their trademark is safe to use because they could not find it exactly. A search on the USPTO website, for example, will often miss names that are not identical to the word being searched. This is often due to different spellings, pronunciations, the use of numerical characters, and the like. Because trademarks are, partially, phonetic in coverage, it is important that odd spellings of similar marks also be located. This is often not possible for a layperson utilizing the USPTO search database.

What’s a Comprehensive Trademark Search?

A comprehensive trademark search seeks to more exhaustively locate all risks associated with the use and possible registration of the selected trademark. It also reveals the extent of non-registered, third-party use of the trademark throughout the country. Finding non-registered, but in-use marks are important because a prior user, i.e. first user, of the mark will have common law rights that supersede the later, second user. The second user may even be able to obtain a federal registration for their trademark if the first user never filed for such, but the first user will have protection in all geographic locales the first user utilized the trademark before the federal filing by the second user. Therefore, not finding a trademark on the federal registry does not specifically equate to freedom of usage everywhere in the US. More worrisome, the first user can oppose the registration of the second user based upon prior usage rights.

Typically, a trademark search involves ordering sophisticated reports from commercial firms and professional searchers who specialize in comprehensive trademark searches. Such reports contain valuable information from multiple sources, including USPTO filings and registrations and individual state databases. Because a business may choose to file for state trademark protection instead of federal trademark protection, the state databases can also be important to search.
A professional trademark search also offers access to extensive trade name databases, directories, registered domain names, corporate and international filings, telephone books, internet usage data, and other valuable resources. These resources help the search team determine the extent of third-party use of the trademark or similar marks.

Benefits of a Comprehensive Trademark Search

Although the US trademark law doesn’t mandate trademark searches prior to using or applying to register a mark, a comprehensive trademark search can be incredibly beneficial for the following reasons:

1- Removes all doubt around the usage of a trademark (or as much as is possible)

A comprehensive trademark search identifies all confusingly similar trademarks, registered and unregistered, allowing a business owner the ability to select a distinct trademark devoid of usage concerns.
This can save a business substantial sums of money. At the very least, a business will not be wasting money on filings that will immediately be rejected by the trademark examiner. Since the first response can take up to 6 months or more, a lot of time will have passed before the business knows the mark is clear – time that may have been lost branding a trademark that can no longer be used. The time and costs associated with even changing a website name can be catastrophic to a new business.

Take note that names can be very similar without being exactly alike. For instance, two names may be deemed similar if they look or sound alike. This is explained in the USPTO trademark registration guide under “Similarity of Marks.” The primary purpose of a comprehensive trademark search is to unearth all similar marks to remove any confusion with existing trademarks.

2- Increases the chances of trademark registration approval

A common reason the USPTO denies trademark registrations is the “likelihood of confusion.” Very often, the US Patent and Trademark Office receives filings for similar marks. Similarity leads to confusion between the source of the good and services, particularly if the similar marks are used with competing or otherwise connected goods or services. If the USPTO cannot clearly distinguish a newly filed mark from any existing registered trademarks, it will likely deny the application until provide further clarity is provided. However, overcoming such a rejection is very difficult, particularly if the goods and services are related.

A trademark search obtained by a professional searcher and reviewed by a trademark attorney is the only way to increase the odds of finding confusingly similar marks that will impede a business’ ability to utilize their chosen trademark. This in turn dramatically increases the odds that the business will be successful in obtaining a federal registration for their trademark.

3- Protects a business from infringement suits

A trademark infringement lawsuit can be overwhelmingly damaging to the business. Actual infringement can lead to a loss of usage of the trademark and all the goodwill that had been acquired by it, monetary damages should the opposition prove their business was damaged by the infringement, and confiscation of all goods bearing the infringing mark. This is on top of the legal fees that can quickly reach six figures. The infringer will essentially need to start at ground zero with a new name, new website, new signage and the like to remove the old trademark and replace it with a new one. The process can, and often does, take several years and has often bankrupted the losing party.

In order to understand how often these suits go to court and the cost of a trademark infringement suit, the American Marketing Association (AMA) has looked at the figures associated with trademark infringement lawsuits. On average, US District courts handle 3,000 trademark infringement lawsuits yearly and the average cost of going through trial is between $375,000 to $2 million. While 3000 lawsuits is actually a small number when there are over 30 million businesses in the US, it helps to remember that majority of infringement allegations never reach the court and typically end with one side giving up their valuable name.

Conducting a comprehensive search before using and applying for registration of a trademark can prevent infringement issues from surfacing and ensure the mark is strong for usage against third-party infringers.

Key Takeaway On Trademark Searches

A preliminary trademark search that involves checking the USPTO website for similar business names and logos is a great first step when establishing a trademark for a business or new products and services. However, a quick search is not enough. If the company fully intends on moving forward with a trademark, it should engage a professional attorney for a comprehensive trademark search to help ensure a more seamless usage and registration process.