Nearly every company has a trademark or service mark – either the name of the company advertised to the public or the name of the company’s product. A trademark is a name, word or logo used to indicate the source of a product or service. While a “trademark” technically refers to a brand used on goods and products (e.g., coffee, sneakers, jewelry), a “service mark” refers to a brand used in connection with services (e.g., restaurant services, insurance services, accounting services).
Prior to using or advertising a new brand in connection with a business or product, it is very important to have a trademark attorney conduct meticulous trademark searches to clear the potential trademark for use and registration. It is important for a business owner to know whether there are risks to the company’s use and registration of the proposed trademark.
Once the trademark has been cleared, a trademark owner should protect its trademark by filing an application to register the mark with the United States Patent and Trademark Office, state trademark offices (e.g., Florida), and/or foreign countries, as appropriate.
At a minimum, when selecting a trademark, a business owner should conduct an Internet search or use the free search engine located on the United States Patent and Trademark Office’s website – Trademark Electronic Search System (TESS) - http://www.uspto.gov/trademarks-applicationprocess/search-trademark-database. However, a two-step trademark search is recommended to truly ensure complete due diligence.
First, a preliminary “knockout” search typically is conducted to determine if an identical mark has already been applied for or registered with the United States Patent and Trademark Office (USPTO) or with any state trademark office. This first and very critical step helps determine the potential availability and registrability of a proposed trademark, and can easily determine whether a proposed mark is not worth pursuing due to conflicting marks. This preliminary search typically only reviews pending applications and issued registrations in the database of the USPTO and state trademark offices for identical, registered trademarks, which are the tip of the iceberg when it comes to trademark usage by companies; thus, there could be additional use of the same or similar marks at common law.
Accordingly, if no conflicts are found and the preliminary search looks clear, the next step is to conduct a more thorough, due diligence trademark search. This more comprehensive trademark search aims to determine any further risks associated with the use and registration of the mark and the extent of non-registered, third-party use of the mark around the country. This comprehensive search is also very important to help determine possible infringement risks of a proposed trademark.
This second level of searching typically involves ordering a sophisticated report from a commercial search firm that specializes in generating these types of comprehensive trademark search reports. The search report discloses information gathered from a variety of sources, including federal trademark/service mark applications and registrations in the USPTO, available state registrations, and also searches an extensive database of trade names, trade directories, corporate filings, international filings, registered domain names, Internet usage, telephone books and other non-registration sources to determine the extent of third-party use of the same or similar mark around the country.
These searches also search design and logo components and phonetic equivalents and other variations on the proposed trademark. Although such a comprehensive trademark search offers a more thorough discovery of potential conflicts and risks involved with the use and registration of the potential trademark, it is not exhaustive.
Benefits of Trademark Searching
Although U.S. trademark law does not require that trademark searches be conducted prior to using and/or applying to register a trademark, trademark searches are important as courts have held that the failure to conduct a trademark search prior to adopting a mark can constitute evidence of bad faith and/or willful infringement. A court determining whether a trademark infringement defendant acted in good faith will look to see if a business conducted trademark searches when selecting a mark.
Though courts generally hold that failure to search does not by itself prove bad faith, a thorough and documented trademark search and the use of experienced trademark counsel in clearing the mark in question can negate a charge of bad faith.
While conducting trademark searches is not mandatory under trademark law, the searches can uncover substantial risks of which a business owner would otherwise be are unaware, and save the business owner substantial time, money and headaches down the road.
Monica B. Mason is senior counsel at Trenam Law (Tampa, Fla.), where she focuses her practice on intellectual property law including trademarks, copyrights and domain names. She may be reached at firstname.lastname@example.org.