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Trademark Search? What Is That? A trademark search is a search of various
trademark databases for
the purpose of identifying identical or potentially
similar
trademarks, their status, and their owners. The reliability of the
trademark search results depends on the number and the quality of the databases
searched, and on the search techniques used (wild cards,
Boolean operators, phonetic searches, etc).
Do I Need A Trademark Search?
For most businesses, whether they are
for-profit or non-profit, the answer is yes. It is wise
to decide to invest in a business name, product or service name (or logo) only after you
have a comfortable degree of certainty that the name or
the logo is yours. Or at least, you should know the
trademark risk you assume, before spending money and
other resources in promoting the respective name or
logo.
A good analogy can be found in the
construction field: you would not want to build your
house on an untested ground. Would you? The risk you
would take would be directly proportional with the value
of the house you want to build. Similarly, the more
serious/valuable the business you want to build is, the
higher is the risk you take if you do not conduct
yourself or order a
professional trademark search.
What's The Risk Of Not Conducting a Trademark
Search?
That is what is called trademark risk. Trademark risk
is the risk that someone else already applied for, or
registered the same or a similar trademark, which may
result in the registration being denied by the
USPTO and
the loss of the filing fees among other things. In
addition, it is the risk that someone else can claim rights in your
trademark, or even worse, that someone else can claim
superior rights to yours. If someone else can claim
rights in your trademark, obviously your trademark is a
weak mark. Furthermore, if someone else has begun using
the trademark before you did, he is a senior user, and
therefore, he may have superior rights in the trademark.
A senior user may force you to stop using the trademark,
and may sue you for trademark infringement. This is
especially true when the senior user has the financial
means to do so (e.g., a large corporation, etc).
Do I Need A Trademark Search Done Beyond USPTO?
Obviously, the more extensive your trademark search
is, the more revealing the search results are, and
therefore, the more informed you are and the less is the trademark risk you take. For
example, if you make yourself or order a professional
federal/USPTO search before filing, you decrease the risk that the USPTO will deny registration of your trademark, and
therefore, you decrease the risk of loosing the filing
fee ($325) and other expenses; you also decrease the
risk that you will infringe someone else's rights in a
federally registered trademark. However, you are still
exposed to the risk that someone else is already using
the same or a similar mark, and did not register it with
the USPTO. This could be a serious problem, especially
when that someone is a senior user. This is because in
United States rights in a trademark may be acquired by
use of the trademark in commerce, and registration
generally only adds to those rights. This problem can be
addressed, and the trademark risk further reduced, with
a comprehensive search which includes the USPTO, the
states (50), the common law, and the domain names search.
Can
I Perform A Trademark Search On My Own? If Yes, How?
Unless you are familiar with search
techniques (wild cards, etc), and you know how to access
and use the appropriate trademark databases, the answer most
experts would agree with, is no. However, you should
always do some preliminary investigation, at least by
simply making a search in Google for example, to see what comes up.
You could even try to use the USPTO database, at least
by performing a simple search: just type in your
trademark, assuming it is in standard characters, and
see the results. The preliminary investigation you make reduces the risk
that you pay for a professional trademark search only to find out
that the trademark is not available.
When Should I Conduct Or Order A Trademark Search?
Ideally, you should do a trademark search before you
start your business, and before you launch a new product
or service. And once you determine that the trademark is
available, you should immediately register it.
What Is The Difference Between Word And Design
Trademark Search?
A 'word' trademark search involves searches for
business name, product or service name, or slogan, as
they appear in standard characters; no special fonts, no
colors, or design is part of the trademark. Example: 'FlexOne'.
By contrast, a 'design' trademark search involves a
design, logo, or word mark with special fonts, and/or
colors. Example: ?FlexOne.
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