Why Do a Comprehensive Trademark Search?

Photo by Patrik Michalicka https://unsplash.com/@patrikmichalicka.

Applying for a trademark registration can be easy or a minefield depending on the uniqueness, or lack thereof, of your proposed mark.

Before applying for a trademark registration, I would highly recommend that you have a comprehensive search performed on the mark if you plan to use it as a national brand or to apply for international trademarks. A trademark search for these purposes should not be limited to looking through the U.S. Patent and Trademark Office (USPTO) database to see what has been registered. It should also include having a comprehensive search performed to see if there are marks throughout the country which may already be in use but not registered with USPTO.   Remember, you do not have to register a trademark with the USPTO to have a common law trademark and the right to protect it from infringement.

Registering your trademark with the USPTO gives the added protection of the presumption of your ownership of the mark unless someone else can prove they had a prior ownership. It also gives you the right to federal statutory damages for infringement of your mark which are not available if the mark is not registered. And finally, registration of the mark allows you to seek attorney’s fees from the infringing party if you are successful in your claim.

A comprehensive trademark search reports on competing marks that could be problematic in your application process.  It looks at state business registrations, social media, search engines, tax filings, etc. to see if there are any business or organizational names (registered or not) that are similar to your proposed registration mark. The report provides an analysis of the risk involved with submitting an application for your mark. If the risk is non-existent or low, then the risk of facing opposition upon review by a USPTO assigned examining attorney, or during the publication period, should be low. However, if the risk is high, you may very well face opposition when your application is reviewed by the examining attorney, or during the publication period if it gets past the examining attorney. You may even want to consider making changes to the mark before applying if the results of the comprehensive report show a high risk. Remember, USPTO filing fees for trademark applications are non-refundable, so save yourself the expense and aggravation and get a comprehensive trademark search done.

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