Do I Need a Trademark Search? YES!
You’ve selected your trademark, maybe even designed your logo. You love it and can’t wait to share it with the world, but hold on a minute. How do you know if you can really own that name? How do you know someone else out there isn’t using the exact same trademark for the exact same or similar products? How do you know you won’t get sued for trademark infringement? Is that even possible? It is, after all, your mark, right? The short answer is, maybe not!
The best way to know what other brands or marks exist that may possibly affect your right to own a particular name is to conduct a trademark search. A Comprehensive Trademark Search is the broadest of trademark searches, and generally includes the federal trademark database, trademarks in all 50 States, domain name registrations and common law uses. A comprehensive trademark search includes your exact mark, as well as variations that may create consumer confusion and possibly affect your ability to use and register the mark.
The Pros and Cons of Searching
Like most things, there are pros and cons to running a trademark search but the pros outweigh the cons in every instance.
CON: It may cost more up front to conduct a comprehensive trademark search than to proceed without one. Any perceived savings, however, may cost you more in the long run if the Unites States Patent and Trademark Office (USPTO) finds a problem with your trademark application based on a prior-registered mark. In considering a trademark for registration, the USPTO looks not only at the mark contained in the application, but also variations of the mark that could possibly be confused with a registered or prior-filed trademark. If you fail to conduct a trademark search before filing the application, you may be in for a costly surprise if the USPTO issues an Office Action refusing registration on the basis of likelihood of confusion with another mark. Office Action responses usually incur additional fees and if the mark cannot be registered, any legal expenses and filing fees paid are generally non-refundable.
CON: It may force you to rethink or rework your brand. This is pretty self-explanatory. If you conduct a trademark search and determine that your mark is already in use and registered by another trademark owner, you may have to take a step back and consider rebranding. This may require additional time and money but it is worth it in the long run because: (1) you would find out before you spend even more time and money building up a brand that arguably belongs to someone else, and (2) you’ll have a better chance of having complete ownership of your brand when your trademark ultimately registers.
PRO: It reduces risk. As mentioned above, a trademark search reduces some of the unknown and inevitable risks that may arise during the trademark registration process.
PRO: Trademark searches allow you to know ahead of time what other marks exist that may affect your right to use a particular trademark and the chances of getting a registered trademark.
PRO: A trademark search may avoid unnecessary expenses, such as Office Action responses and non-refundable filing and legal fees.
PRO: A trademark search reduces the risk of being sued for trademark infringement or facing an action for cancellation of your mark. In addition to seeking approval from the USPTO, trademark applicants must navigate past other trademark owners who are entitled to protect their trademark rights. This may be in the form of a Cease and Desist Letter, a Notice of Intent to Oppose your mark, or something more aggressive like an Opposition or Cancellation Proceeding before the Trademark Trial and Appeal Board or a lawsuit in federal court for trademark infringement.
Now that you understand why a trademark search is essential, don’t think twice about searching your mark. We offer an affordable Comprehensive Trademark Search & Application Package for $475. This package includes a search of the federal trademark database, trademarks in all 50 States, domain name registrations, common law uses and an Attorney Opinion Letter analyzing and explaining the search results. The package also includes an attorney-prepared trademark application. By conducting a comprehensive trademark search, we ensure you know exactly what to expect during the trademark registration process and you will not be surprised by a prior registered federal trademark, or a common law user who may attempt to oppose your trademark application.
Contact us today at (800) 769-7790 for a complimentary consultation with one of our attorneys regarding our FlatFee trademark search services.