Obtaining a Federal trademark registration is generally a two-step process. The first is the search step. The second is the application step. Oftentimes, trademark applicants proceed straight to the second step without conducting any sort of rigorous search process. However, if the trademark search step is skipped then the company seeking trademark protection is proceeding without knowing the risks involved in adopting and using the proposed mark. The company could be infringing on another’s trademark rights and run into problems downstream – usually at what seems a most undesirable time.
If the company uses a mark that is confusingly similar to another’s trademark, then the company is infringing on another’s trademark rights. Early on, it may be easy to switch marks. However, after considerable time has passed since adopting the mark, it does become harder to switch marks due to existing inventory, existing goodwill and future plans. As such, it may be important to conduct the search prior to proceeding to the application filing step and launching the product. Once the proposed mark is cleared for adoption and use, the company is more aware of their risk profile in adopting the proposed mark.
Please note that even with the search, there are no guarantees. The proposed mark may have been cleared for adoption and use. However, such clearance is only good to the extent that all prior marks were found and adequately considered. There are also many gaps in the search process but it is a good idea to put forth a good faith effort to minimize the possibility that you might be infringing on another’s trademark. The consequences could be significant since it could mean legal expenses to defend and more importantly changing your mark in the middle of a marketing campaign. Changing one’s mark may not seem like a significant issue but after one or more years of using the mark, the goodwill associated with the mark is hard to change and may delay launch of the product.
Companies can conduct their own search on the USPTO website which is recommended prior to paying for a formal trademark search. Thomson Compumark conducts trademark searches for a fee. However, they do not and will not provide an opinion or an analysis of the search results. Moreover, if the proposed mark and/or the goods and services description provided to them is incorrect, then the trademark search may be useless or less useful.
Two different types of formal trademark searches are commonly used. The first is a limited trademark search which searches only the federal database and the databases of all 50 states of the United States and its territories. The second is a full trademark search which searches the federal and state databases as well as a number of other databases such as magazines, internet, business listings, etc. The more databases that are searched, the more likely something will be found that conflicts with your proposed mark and that is a good thing because it helps avoid future problems and helps evaluate potential conflicts. The benefit of conducting the full search versus the limited search is that the full search provides more peace of mind if no conflicting marks or names are found after conducting the full trademark search.
After the mark passes the trademark search step, the trademark application should be filed shortly thereafter with the United States Patent and Trademark Office to secure federal trademark rights. Upon successful registration, anyone that uses a mark confusingly similar to the proposed mark would be infringing on the federally registered trademark rights.
In lieu of conducting a limited or full trademark search, some companies rely on the trademark search conducted by the trademark office. When a trademark application is filed with the United States Patent and Trademark Office, the trademark office conducts its own independent trademark search. However, the search is only of the Federal database. It does not check state and other databases as is searched for in the limited and full trademark search. Moreover, it could take a few months for the trademark office to render its office action letting you know if they found any conflicting marks.
With all this said, if a corresponding domain name closely associated with the proposed mark is crucial, then secure the desired domain name first before going through the formal trademark search and trademark filing steps discussed above. The reason is that the relative costs associated with the registration of the domain name is significantly less than that of the trademark search and application steps.
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