“Look before you leap” is a solid rule to live by, especially when trademarks are involved. You need to conduct a trademark search before adopting and using a trademark. Otherwise, you may infringe on someone else’s trademark rights. If you’ve avoided researching trademarks because you’ve wanted to avoid attorneys, just wait you’ve infringed on a trademark. The best-case scenario is a minor legal hassle, with minor expenses. More likely is that you put your business and your personal finances between the hammer and the anvil.
The good news is that a trademark search can help you avoid the painful alternatives, if performed by a patent attorney who knows the USPTO well.
What is a trademark search?
A trademark search is a search of the trademark database for any senior marks – that is, specific components of an existing trademark – that would prevent you from registering and adopting your proposed mark.
What are the benefits of a trademark search?
- The trademark search will reduce the risk of infringing on another trademark. If you infringe on another’s trademark rights, they could force you to change your mark after you’ve invested time and money into building your brand.
- The trademark search will increase the probability of registering your proposed mark. Our search will find senior marks registered with the trademark office that would block you from registering your proposed mark. If so, we will advise you on how to get around those marks, if possible and whether you need to change your mark to avoid infringement.
What are the different types of trademark searches?
Different levels of trademark searches exist. They are:
- Knockout search
- Comprehensive search
- International search
A knockout search is a basic search. It searches the U.S. federal trademark database. For many clients, this is sufficient.
Should you require a deeper search, the comprehensive search digs into the federal and state databases as well as other databases including Dun and Bradstreet, internet sightings, business filings, etc. It is a comprehensive search and will give you a much more granular level of detail into other companies that may have already utilized a similar mark compared to your proposed mark.
An international search is a knockout search but searches foreign trademark databases.
Depending on your requirements, we will conduct the appropriate search for you.
How we help you through the process of a trademark search?
Using our proprietary software, we will search for the proposed mark. During our consultation we will talk through the uncovered senior marks and whether they will pose a problem for you.
The analysis involves a discussion between the respective marks and the respective goods and services. But it’s much more than that. We need to discuss the relative strength of the uncovered marks and whether we can craft a goods and services description to avoid future problems.
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In general, it’s never too late to get a trademark. However, if other people start to use your trademark and you do not enforce your trademark rights, your mark could become generic, and you wouldn’t be able to register your trademark.
It’s also too late to get a trademark if someone else has already filed for the same trademark that you’re using. You may have a cause of action against that person for stealing your trademark. However, the cost of litigation deters most people from asserting their rights against that person. Thus, they will lose the ability to obtain their trademark.
Trademark and patent trolls are those that use their trademark and patent rights to file frivolous lawsuits.
Trademark trolls do exist, but they are less common than patent trolls. The reason is that trademark rights are easier to assess than patent rights. As a result, it’s harder for trademark trolls to make defendants spend a lot of money assessing their rights.
Moreover, unlike patent trolls, trademark trolls actively use their business mark to sell their goods and services. Their trademarks are valuable to them as a part of their business. This is not true for patent trolls. Patents used by patent trolls are typically not used by the patent owner in their business. When a lawsuit is filed, the defendant will assert that the patent or trademark is invalid. As a result, trademark owners that use their mark actively in their business are incentivized not to jeopardize their trademark rights. They are less willing to potentially have their trademark rights invalidated than patent owners that aren’t using their patents.
In general, if you infringe on someone else’s trademark, most settlements require you to either destroy your inventory or dispose of them within a very short period and payout a per-item royalty for any past product sold.
Both a design patent and a trademark can protect a design element. We will guide you through whether you should protect your design element with a design patent or as a trademark.
Design patents and trademarks protect the design elements in different ways.
In particular, a design element can be protected as a trademark. It’s called a trade dress. Trade dress rights can be used to prevent others from using the design element as their trademark. For example, trade dress rights can be used to stop others from telling their customers to look for the design element when they want to buy the product.
Design patents protect design elements as well. However, there is no need to prove that others are using the design elements as their trademark. As such, it’s easier to get others on infringement. But, design patents are enforceable only for 15 years after the grant date, whereas trade dress rights can last indefinitely.
A trademark search is typically called a knockout search because we are trying to determine if other previously used marks would immediately disqualify you from using and adopting your proposed mark.
The knockout search is essential because if someone is already using your mark, you would infringe on their trademark rights and have to change your mark.