A Professional Trademark Search Done Right
On the topic of trademark search, clients often tell me: “I already checked and there is no other company using my trademark, so I don’t need a comprehensive trademark search.”
Just because you have checked the trademark registration database or a search engine like google and you have not found anything, it does not mean that you are not going to have problems when applying for trademark registration. Even if your trademark registers, you could face problems in the future due to another business with prior use of a similar trademark without a trademark registration.
That is why we recommend having an experienced trademark attorney perform the search, analyze and explain the results. This task requires skill and it’s not limited to searching the USPTO database since it seeks for trademarks that although not registered, have common law trademark rights. Due diligence will give you peace of mind and it will save you time and money in the long run.
Furthermore, if you file your trademark application without the insight provided by a trademark attorney’s search report and it turns out that your trademark fails to register, you will have already lost precious time. Furthermore, you’ll also lose the money invested in the cost of the application and on attorney fees. If that happens, you will have to decide whether to abandon the use of your trademark or continue using it without registering it.
Avoid Trademark Registration Refusals
The most effective way to avoid likelihood of confusion refusals is by using proper trademark searching and clearance methods to identify potentially conflicting registrations and applications in advance. If the search identifies potential conflicts, you as may consider:
- Choosing a different trademark that does not pose the same potential risks.
- Modifying the proposed trademark (for example, by adding wording or a design element) to help distinguish it from the potentially conflicting marks.
- Seeking a consent from the owner of the potentially conflicting mark.
- Seeking to purchase the potentially conflicting mark. This may be a viable option where, for example, the potentially conflicting mark is not in use.
- Petitioning to cancel a conflicting registration and requesting that the USPTO suspend action on the applicant’s application until the cancellation proceeding ends.
Risks Even if You Obtain a Certificate of Registration:
- You may be infringing the right of someone who has registered a confusingly similar trademark.
- You may be infringing the right of another who has not registered the trademark but has the right to continue using it.
- In some cases, you will have to abandon the use of the trademark and here you will have lost the connection that your customers have made with the product or service.
The trademark of your products and services is fundamental to the success of your business. A successful business has a solid trademark foundation. Therefore, a comprehensive trademark search is the first step toward achieving success. Now, ask yourself, are you sure you want to rely your on a trademark search performed by you? Let an intellectual property attorney assist you.