This question is often posed to us by our clients in a number of ways. Are we required to run a search? Can I bypass the trademark search and just file the application. The short answers are that you are not required to run a search and yes, you can bypass searching, but most often, we do not recommend it.
Many clients come to us very excited about the name they have conceived for their product or service and are very eager to adopt the name and spend tens of thousands of dollars on marketing, promotion, SEO campaigns, and domain name registrations, to name a few large expenses. These clients are also prepared to skip a very inexpensive and vital step in the process-- and that is---searching or clearing the mark.
Often, clients come to us long after launching their product or service because they have either received a cease and desist letter from a 3rd party claiming our client’s use is infringing their senior mark, or because the United States Patent and Trademark Office ("USPTO") is refusing to register our client’s mark on the grounds that a potential conflict has been detected in the form of a prior-filed application or registration.
Most trademark lawyers-- and I am not speaking about online trademark mills whose sole business model is to file as many trademark applications as possible-- will encourage their clients to search a trademark before they become to wedded to the term and spend significant human and financial commitment on getting a brand off the ground.
The reason we are constantly stressing this step with our clients is to help them avoid potential costly headaches and disputes down the road that could have simply been avoided with an investigation on whether the mark was already in use. By conducting a search, you can learn whether there are potential conflicts and registrability issues and strategize with us on how to avoid potential pitfalls.
A trademark search can be done in two ways. One is known as a preliminary or knock out search, where we will investigate the USPTO records in an attempt to uncover any potential conflicts or registrabiltity concerns. At G &P Law, we offer a reasonable flat fee search (with a written opinion) of the USPTO records that goes beyond searching for identical hits. Please email us for more information on the costs at: firstname.lastname@example.org
The second type of search conducted after the preliminary search known as the comprehensive or full search, requires a professional search agency to conduct a trademark search of all the federal and state registers, business records, trade publications, Internet, domain name registrations and other sources to create a comprehensive report. Once we review this report, we will draft a written opinion on whether your mark is available for your intended use.
So to recap, a trademark search will:
The decision to run a search, and which search or searches are best for you, is determined on a host of factors typically centered around your plans for the mark which we will help you assess. A large part of the trademark counseling we provide is to help you explore which search plans works best for you.
If you have any questions on the benefits of conducting a trademark search, whether you should conduct a search, or the costs associated with a search, please contact us at email@example.com.