Many brand owners that we work with often wonder if it is necessary to do a trademark search before filing their trademark. If your goal is to create a long-lasting, stable brand for your goods or services, a trademark search is essential.
Why Do A Trademark Search?
- You want to know if the USPTO will reject your trademark. If your trademark is too similar to a previously-registered or pending trademark, the United States Patent & Trademark Office (USPTO) could reject your trademark. By doing a trademark search, you will learn if this outcome is likely.
- You want to know if someone can cancel or oppose your trademark. Even if the USPTO allows your trademark, other trademark owners might take issue with your application if they believe that the mark you are trying to register is too close to their own. A cancellation or opposition proceeding can be expensive and disruptive, so it’s important to know if this is possible.
- You don’t want to run into an infringement issue. In addition to problems with registration, you want to understand if there is any risk of trademark infringement liability.
- You don’t want to rebrand later. Any of the issues above can cause problems with registration, but they also could raise the possibility that if there is a problem, that you would have to rebrand down the road. That means that investment in marketing and goodwill can disappear rather quickly.
What’s Involved In A Trademark Search?
Done properly, a trademark search will look for any trademarks that can cause problems. This means searching for problem marks in the federal USPTO database, in state trademark databases, and in corporate name databases. Any of those sources may reveal trademarks that have the potential to cause issues down the line.
It is important to note that it is not enough to search for the exact trademark that you want to register. That’s where a lot of people get it wrong. They search for their trademark – say, XYZ – and if they don’t find it in the USPTO database, then they think they are good to go.
This is wrong.
A professional trademark search will search for variations in the trademark, too. That is because trademarks that are likely to confuse consumers can cause problems, whether that means trouble getting a registration or facing an infringement lawsuit. In our example, if a mark similar to XYZ (say CYZ or XYZZ) is found, then the owner of that mark might have a basis for legal action.
A professional trademark search involves not just looking for the mark in question, but also potentially confusing trademarks. And this is typically something that will be best be done by a trademark attorney who knows how to properly analyze whether a given mark would be deemed confusing (ps: DIY services like LegalZoom generally do not do comprehensive trademark searches).
Need more help determining if a trademark search is right for you? You can contact us and we can answer any questions that you might have about what we can do for you.