With increasing intellectual property litigation, it is not only wise, but necessary to clear newly selected trademarks before goods or services are offered under the brand. Understandably, businesses that own trademarks and brand names go to great lengths to protect their rights to those brands and trademarks. Without appropriate trademark searches, there is a high risk that the use of a trademark will infringe upon the preexisting rights of others. The clearance process, in most cases, involves a minimum of two steps: preliminary and full search.
With a preliminary search, the records of the United States Patent and Trademark Office and the state trademark registers are reviewed to determine whether the exact mark has been registered or is the subject of an application for registration. For several reasons, the preliminary search cannot be relied upon to clear a trademark. A preliminary search does not search for marks having similar spellings, meanings, or appearance. The preliminary search also does not uncover unregistered uses of the trademark. However, the preliminary search is valuable because it may be used to rule out the use of a trademark prior to the full search, which avoids the full search cost.
The full trademark search is a comprehensive search of all pending and registered trademark applications in the United States Patent and Trademark Office, state trademark registrations, and many common law databases such as telephone directories, product directories, company directories, and others. The full search uncovers marks having similar meanings, spellings, and appearance as well as other variations of the mark. While the full search is an excellent tool to be used in clearing a trademark, it is not error free in all cases. The databases searched may be incomplete or, due to searcher error, marks may be missed in the search. However, we have found that a full search is a reasonable tool in making judgments as to whether one can use a particular trademark in the marketplace.
The trademark application process involves accurately classifying and describing the goods or services to be offered under the mark. This information, together with applicant identifying information, is placed in the application to be filed. It usually takes only a few days to prepare and file an application. The United States Patent and Trademark Office charges per class of goods or services as its filing fee. Depending on the goods and services to be offered under the mark, the applicant may have to pay multiples of the filing fee.
Once the application has been filed, an examiner at the United States Patent and Trademark Office will, in most cases, issue an Office Action with comments on the application. If the applicant decides to proceed with the application after receiving the Office Action, a response must be prepared and filed. Assuming the Trademark Examiner accepts the facts and arguments contained in the response to the Office Action, the trademark application will be published for opposition and ultimately be registered, unless a third party files an opposition to the application based on its preexisting rights.
About the Intellectual Property Practice Group
The law firm of Harris Beach PLLC regularly provides clients with a full range of intellectual property services, including those mentioned above as well as patents, non-compete agreements, copyrights, and associated litigation.