Trademark Searches

Prior to adopting any trademark it is advisable that you seek the services of a trademark professional. A trademark professional can conduct a simple or extended search, or "clearance" of your proposed trademark. The importance of this intial step in your due diligence can not be understated. Why would you incur the great expense in designing and adopting a trademark, printing the product packaging, or the marketing materials, and moving forward with a trademark only to later find that the tradmeark is unprotectable or worse an infringement of another's rights?

Small to mid-size businesses consistently fall into the trap of moving forward with a trademark that is an infringement, or adopting a trademark which is essentially unenforceable because of extensive third party use in the same industry. For a small investment, you can be armed with information that will do one of two things: (1) either reinforce your notion that you have a unique/distinctive and fully protectable trademark; or (2) advise you of the inherent defects and potential liabilty that accompany your proposed trademark.

There exists essential three types of trademark searches. Starting from the most basic to the more involved they are:

(1) A scan search. This type of search is designed to simply search the records of the United States Patent and Trademark Office in order to determine if your proposed trademark has already been registered, applied for, or otherwise made of record. This type of basic search is useful if you have a list of proposed trademarks and you want to quickly know which is less problematic. This type of search is limited to identical hits or very close hits in spelling and goods/services.

(2)Federal and State Search. This type of search, also known as a "confusingly similar" search is more expansive and results in a greater perspective of the nature of the rights accompanying your proposed trademark. Rather than simply seek direct hits, this type of search will also search for phonetically similar trademarks and foreign language equivalents of your proposed mark in all classes of goods and services. The search will also seek to uncover trademarks which, while distinct, may be sufficiently similar to warrant a dilution claim against your use (even if your trademark use is for different goods/services). This search will also provide you with an opinion as to the strength of your proposed trademark. All trademarks are not created equal. Rather, trademark strength is measured on a spectrum. This search will attempt to define where your proposed trademark lies on that spectrum.

(3) Full Availability Search. This type of search includes the strategies outlined in no. 2 above, and also includes a search of various databases in order to uncover unregistered trademark uses. For instance, many trademark owners never register their trademarks at the state or federal level. However, their common law usage of their trademarks may entitle them to some protection. Many times, this common law usage is limited to certain geographic areas. However, the Internet has expanded common law rights to some degree. The Full Availabilty Search is the best insurance policy if you are serious about launching a national trademark.

The searches described above can be conducted and reported in a matter of days. Again, it is a minor investment and should be made part of your due diligence before launching any new product or service.

One final note, these searches are limited to the United States. If you are interested in selling your products internationally, you should take steps to insure that your proposed trademark is available for use in the proposed country. Another added benefit of conducting a trademark search in a foreign country is that the foreign trademark search may also advise you if your proposed trademark translates into the local language and culture.

Frank Herrera