All Trademark Searches are Not Created Equal

You’ve invested time and money into developing a new business name, brand, logo, or package design and you want to protect it by registering for a federal trademark. That’s great! You’re taking the right step to ensure only you can exploit your intellectual property in the marketplace and earn money from it.

But wait. There’s a problem.

The first step to trademark registration is conducting a trademark search to ensure there are no other marks already registered or in use in the marketplace that could mean your mark would cause confusion in consumers’ minds. A conflict would mean that you can’t register your trademark and you could be sued for infringement if you continue using your unregistered mark in commerce. You’d need to incur all of the expenses to rebrand such as creating new designs, depleting or destroying old inventory, and recreating brand awareness and recognition. The costs can be huge!

So you decide to conduct your own trademark search or pay for a trademark search through a legal document services provider like LegalZoom, through your general business attorney, or through an intellectual property attorney. Each of these providers charges a different fee for trademark searches and they get more expensive as you go down the list. But there is a reason for that:

All trademark searches are not created equal.

Let’s take a look at the three primary types of trademark searches so you can research what each service provider you consider using to conduct your trademark search actually delivers to you and balance the price tag with the amount of risk you’re willing to take.

1. Knock-out Trademark Search

A knock-out search is the most basic type of trademark search. It only looks at active records at the U.S. Patent and Trademark Office (USPTO). These are pending applications and federal registrations of trademarks. The search will only uncover identical marks (referred to as direct hits) that will block—or “knock out”—your ability to register your proposed mark.

However, there are many other reasons that your proposed mark might not be able to be registered that a knock-out search will not find. If you submit a trademark application based on a knock-out search that showed there were no matches to your proposed mark, it is very likely that you’ll receive one or more Office Actions from the USPTO examining attorney which you’ll be required to resolve (if possible) before the mark has a chance at being approved.

Keep in mind, a knock-out search doesn’t determine if a mark is unavailable for registration nor does it tell you if the mark is unavailable for commercial use. It simply determines if there are any glaringly obvious conflicts.

2. Preliminary Trademark Search

A preliminary trademark search only looks at records at the U.S. Patent and Trademark office, but in addition to searching active records like a knock-out search, it also searches inactive records (i.e., applications that have been abandoned and registrations that have been cancelled).

A preliminary search not only uncovers identical marks that will block—or knock-out—your ability to register your proposed mark, but it will also uncover similar marks that may limit your ability to use and register your proposed mark in the manner you wish, effectively narrowing the scope of protection available for your mark.

Additionally, a preliminary search reveals information regarding inactive marks, specifically abandoned applications and cancelled or expired registrations, which may provide helpful information regarding any restrictions on the commercial use of your mark.

Inactive marks can’t block federal registration or be cited against a trademark application based on a likelihood of confusion in the marketplace, but they are highly instructive as to common law rights. For example, many trademark registrants forget to maintain their registrations, but their common law rights remain intact despite the cancelled registrations.

It’s important to note that a preliminary search only determines if a mark is unavailable for registration, not if it is unavailable for commercial use.

3. Comprehensive (or Full) Trademark Search

A truly comprehensive trademark search provides the greatest levels of peace-of-mind that your mark can get maximum protection under trademark laws. A comprehensive search looks at everything included in a knock-out and preliminary search as well as the records in all 50 state registries, business name databases, common law or “unregistered” uses online, uses in industry publications or trade journals, domain name registrations, and social media user names.

A comprehensive search covers both registered and unregistered references and determines not only if a mark is unavailable for registration but also if it is available for commercial use. The full search provides a much more comprehensive look at the “lay of the land” vis-à-vis third-party treatment of the mark (i.e., will someone challenge your mark on the grounds they have prior rights?) and the USPTO treatment of the mark.

One of the most valuable parts of a comprehensive search is that it provides you with a legal opinion (which should be prepared by an intellectual property attorney) regarding the legal scope of protection available for your mark. This type of search is best for everyone but it is extremely important for businesses that want to launch a product nationwide and for companies with products that are susceptible to counterfeiters.

The Takeaway

Be careful because many trademark search providers use the terms knock-out, preliminary, and comprehensive interchangeably and incorrectly.

Read the fine print and review everything included in the trademark search that you’re considering paying for. Once you’ve done your due diligence, you can make an educated purchase decision that balances cost savings now against risk and expenses in the future. Remember, you get what you pay for.