Trademark Availability Searches.
A search helps to determine the availability of a trademark and therefore is an important step in the trademark process. Under certain circumstances, a prior user of a trademark can stop you from using your trademark. This can be a real headache for business owners, especially when they are forced to change their trademark after investing time and money in it.
A search provides information about registered or pending trademarks and those being in used in the marketplace. I offer two levels of searches: an in-house preliminary (“knockout”) search and a comprehensive search.
A comprehensive search is conducted using a more expansive set of databases and therefore yields more information than a than a knockout search. The more information you have up front about the prior use or registration of a trademark which is identical or similar to yours for goods or services similar to yours, the more clarity you will have concerning your trademark's availability.
Conducting a search can provide you with greater security regarding the ultimate ownership of your trademark - or provide you with a much-needed warning to choose another trademark. Read on to find out more.
Level one: In-house, "knockout"
The first step in determining a trademark's availability is a preliminary or "knockout" search. Using an expanded database of trademark application and registrations (which is more extensive than the database search available on the U.S. Trademark Office website), I perform an initial knockout search focused on obvious obstacles to registration.
This database allows the search of the U.S. federal and state, Canadian, EU (European Union), Japanese, and WIPO (World Intellectual Property Organization) trademark registries. Other foreign registries can be searched for an additional provider fee.
In addition to searching official trademark registries, I undertake a brief internet search for use of an identical or similar trademark or business name.
I prepare a initial knockout search report and discuss these preliminary results with you. If no obvious obstacles to your proposed trademark exist, we discuss the merits and costs of ordering a comprehensive search.
Level two: outsourced, Comprehensive search
If the knockout search appears to be clear, the next recommended step is to order a comprehensive trademark availability search from a trademark screening company called Corsearch. (This requires an additional, outside fee.) As indicated, a comprehensive search is more informative and dependable than a knockout search.
Using their comprehensive, proprietary set of trademark databases, Corsearch undertakes a more wide-ranging search which provides a broader view of trademark records and the marketplace than any attorney, lay person, or online search.
Once the search is completed, Corsearch issues a full report with all of its findings. I provide you with that report, along with my commentary and legal opinion.
Though a comprehensive search is an added expense, a good trademark lawyer will always recommended it. A knockout search is a good step toward identifying potential issues, while a comprehensive search provides worthwhile additional clarity regarding the likely availability of a trademark.
Note: Ultimately the level of searching is a business decision, based on the situation, your budget, and risk tolerance. No search provides an absolute guarantee of availability. Further, since trademark rights are territorial, certain foreign trademark searches are not covered above and should be discussed independently.