Why do a trademark search?
Before adopting a brand name or a trademark, or before filing an application to register a trademark with the United States Patent and Trademark Office, it is wise to have a trademark professional perform a trademark search to clear the use the of the mark. It is less expensive to clear the use of the mark before adoption. Failure to do so runs the risk of being sued for trademark infringement or receiving a cease and desist letter from the owner of the senior trademark. This can lead to expensive legal bills to defend a trademark infringement action. Worse, it can cause one who has used a mark in commerce to be forced to change branding, thereby costing you business, brand-name recognition and goodwill. Therefore, it is always recommended to have a trademark professional perform a trademark clearance search prior to adopting the mark.
What are the various types of trademark searches?
There are generally two types of trademark searches that a trademark professional can perform. The first is a search of the Federal Trademark Register and searches for marks that are registered at the United States Patent and Trademark Office, and for marks that are not yet registered, but for which applications for registration have been filed and are pending. The second type is a common-law trademark search. This search reveals marks that are used locally, or even nationally, but for which no Federal Trademark Registration has been issued or is pending. This is important, because trademark users have some (albeit weaker) trademark rights notwithstanding the fact that they do not have a Federal Trademark Registration. A common law search would reveal marks that are registered on state trademark registers, company names, marks used locally, and the like.
How does one interpret a trademark search?
Only a trademark professional who has experience in this area can give an informed opinion as to the availability of a trademark. A trademark is not eligible for trademark registration if there is a likelihood of confusion with another mark. Likelihood of confusion is subjective, and is considered in accordance with public perception. In other words, the question becomes whether or not a significant percentage of the relevant consuming public is likely to be confused as the to the source or origin of the goods or services. There are a number a factors which are examined in a determination of likelihood of confusion. These factors have been set down in the case law and the seminal case on this matter is familiarly known as the du Pont decision. Among the factors which go into a determination of likelihood of confusion are the similarity between the mark, the similarity between the goods or services, the relatedness of the goods or services, the strength of the senior mark, and the likelihood that the senior trademark owner would expand its goods and services and avenues of trade to encompass those of the junior mark.