What is the Importance of a Trademark Search & Why should it be done BEFORE a Trademark Application?

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The article below was published by my colleague, attorney Derek Fahey, Esq. of THE PLUS IP LAW FIRM. Derek and I recently had the opportunity to face this head-on with a mutual client, and saved the client significant time, $$ and headaches by catching a conflict in advance! We would love to assist you with this process as you move through the important process of navigating the Intellectual Property waters, be it trademarks, copyrights, trade secrets, patents, or otherwise. And, at ScaleUPCheckUP™ we can help you identify potential IP opportunities and navigate ways to make these lucrative possibilities for you and your scaling company.

A trademark search is a review of various sources, including trademark databases, to determine whether a particular trademark or service mark (1) infringes the rights of a prior user and (2) can be registered with the United States Patent and Trademark Office (“USPTO”).

Almost every business sells goods or products using a trademark or service mark.  A trademark or service mark includes any word, name, symbol, device, or any combination thereof, used to identify and distinguish the goods and services of one seller or provider from those of others.  Most savvy business owners and managers will have a trademark search conducted before developing a brand.

A business will allocate significant amounts of time, money and resources in developing a brand.  As a result of this significant investment, a business should determine if a trademark or service mark is available and registerable with the USPTO before investing in a particular trademark or service mark.  If a particular trademark or service mark is not available or registerable, many decision makers will not waste resources in developing it because of the risk of infringing on another’s mark as well as an inability to protect their brand.  Determining if a trademark or service mark is available and registerable with the USPTO requires a legal analysis that should be completed by an attorney experienced in trademark law.  The attorneys at the Plus IP firm have successfully registered hundreds of trademarks and service marks on behalf of their clients.

A trademark search is required to determine if a trademark or service mark creates a “likelihood of confusion” with another trademark or service mark filed or registered with the USPTO prior to the filing date of a registrant’s trademark or service mark application. After a trademark or service mark application is filed, an examining attorney at the USPTO conducts a trademark search to determine whether he or she believes the trademark or service mark creates a likelihood of confusion with another trademark or service mark filed or registered with the USPTO prior to the filing date of a registrant’s trademark or service mark application.  The factors an examining attorney at the USPTO considers to determine if a likelihood of confusion exists include:

  • The similarity or dissimilarity of the marks;
  • The relatedness of the goods or services;
  • The trade channels in which the goods or services travel;
  • The conditions under which the goods are sold and purchase, i.e., “impulse” vs. careful, sophisticated purchasing;
  • The number and nature of similar marks in use on similar goods or services; and,
  • The existence of any valid consent agreements.

While a trademark search is not legally necessary before filing an application with the USPTO, it is well advised to conduct a trademark search to determine if a particular trademark or service mark is registerable.  Having a professional trademark search conducted will provide trademarks or service marks that could affect an applicant’s ability to register a trademark or service mark.   The attorneys at the Plus IP Firm always recommend conducting a trademark search before filing a trademark or service mark application with the USPTO.

Based upon our experience, USPTO examining attorneys do sometimes reject trademark or service mark applications based upon a flawed likelihood of confusion analysis.  If you have received a likelihood of confusion rejection, also known as a 2(d) rejection or Office Action from the USPTO, the attorneys at the Plus IP Firm are available to review the Office Action.  The attorneys at the Plus IP Firm have overcome many 2(d) or likelihood of confusion rejections on behalf of their clients.

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While the above is not and should not be considered legal advice, since circumstances vary, ScaleUPCheckUP™ monitors these rapidly developing issues, as enforcement of the law switches into high gear. Instead, the foregoing is intended as an overview and not legal advice, nor does it create an attorney-client relationship. However, contacting an attorney to steer through the maze of bureaucracy to register and defend a mark may very well be necessary to consult an attorney.

ScaleUPCheckUP™’s blog, website, newsletter and other forms of communication contain general information about legal and related matters. The information is not legal advice and should not be treated as such. You must not rely on the information on this website as an alternative to legal advice from your attorney or other professional legal services provider. If you have any specific questions about any legal matter you should consult your attorney or other professional legal services provider.

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