Trademark searches help trademark applicants ensure that their trademark will not violate any already existing trademarks, resulting in application refusals or other legal difficulties. Trademark searches are always conducted when trademark applications are filed with the USPTO by an examining lawyer, however, it is important to perform a preliminary search before filing as well.
Why Should You Perform a Preliminary Trademark Search?
Performing a preliminary trademark search is vitally important. Why so? If an examining lawyer with the USPTO finds your trademark is likely to cause confusion with a trademark already in the system, your application will be refused and you will not receive a refund. If, on the other hand, you or your attorney come across a mark that might block your own before filing, you will have time to change your mark to something more unique. This will save you hundreds of dollars and months of time.
How is a Trademark Search Conducted?
A trademark search, at the very least, will include going to uspto.gov and using the Trademark Electronic Search System (TESS) to search for federal registrations and applications that could conflict with your trademark. You can use the system to search for word marks, design marks or a combination of the two. Before getting started however, you will need to learn how to use the system to perform a search and how to interpret the search results. A thorough trademark search will include many other resources as well, such as state-level Secretary of State websites.
Trademark searches are very time intensive. This is because words that sound the same, but are spelled differently, words with similar meanings, and variations of words can all be considered likely to cause confusion. For example, if your trademark contains the word “run”, you would need to search for the words “running”, “ran”, “runs” and “runner”. In addition, if the trademark contains multiple words, all of the potential combinations of those words must be searched.
Benefits of Hiring an Attorney to Perform a Preliminary Trademark Search
As you can tell, conducting a thorough trademark search is complex and involves many hours of hard work and research. Fortunately, a qualified trademark attorney can help you through the process. Trademark attorneys routinely conduct trademark searches. We make sure that there are no common law, state or federal trademarks already in existence that conflict with the trademark you are about to file. A trademark attorney can help you through the search and application processes, providing you with solid legal advice along the way. In the long run, you will find that hiring a trademark attorney will save you a considerable amount of time and money. Please feel free to contact me anytime if you need assistance conducting a trademark search.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets. More information about patents and other IP may be found at www.IngenuityLaw.com.