Why Conduct a Trademark Search?
A trademark search is not a mandatory step, but it is highly advisable due to several key reasons:
- Reducing the Risk of Trademark Refusal
One of the most common reasons for conducting a trademark search is to minimize the risk of refusal by the United States Patent and Trademark Office (USPTO). If your proposed trademark is similar to an existing registered one, the USPTO is likely to issue an Office Action rejecting your application.
- Avoiding Potential Trademark Infringement
A thorough search helps identify potential conflicts with existing trademarks, reducing the risk of future trademark disputes. Trademark infringement lawsuits can be costly and may even force a company to rebrand, leading to unnecessary expenses and lost brand recognition.
- Saving Time and Costs
Conducting a trademark search early on helps businesses avoid investing in a brand that might later face legal challenges. By identifying possible conflicts in advance, you can make informed decisions, prevent costly rebranding efforts, and ensure your trademark registration process is as smooth as possible.
Types of Trademark Search
The type of trademark search you need depends on your goals and budget. Below are the three main types of searches:
| Type | Preliminary | Federal | Comprehensive |
| Explanation | Identifies identical trademarks | Identifies trademarks that can be opposed by the examiner because trademark applied for registration could cause a likelihood of confusion | Searches federal, state, common law trademarks, business entities, and domain names |
| Advantages | Quick Affordable | Reasonably priced Identifies potential conflicts during the registration process | Identifies potential conflicts during the registration process Identifies potential conflicts while using trademark Helps avoid legal disputes and rebranding |
| Drawbacks | Only finds identical marks | Does not cover state-registered and common law trademarks | Expensive Takes a few days to complete |
| Conditions to conduct | Filtering initial name options before a deeper search | Businesses needing USPTO data to reduce the risk of trademark refusal | Companies serious about brand protection Businesses looking to avoid future trademark conflicts |
Why Work with a Trademark Attorney for a Trademark Search?
A trademark attorney does more than just conduct a search — they provide legal insights and strategic guidance to help you navigate the trademark registration process. Below are key advantages of working with a trademark lawyer or law firm for your trademark search:
Comprehensive Risk Assessment & Recommendations
A trademark attorney not only conducts the search but also analyzes the results to determine whether you can proceed with registration. If potential conflicts arise, they can advise whether minor adjustments or a complete change to your trademark are necessary.
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Tailored Strategy for Your Business Goals
In some cases, risks may only apply to specific goods or services. A trademark attorney helps assess whether these risks align with your business strategy, allowing you to make an informed decision.
Identifying Additional Refusal Risks
Besides conflicts with existing trademarks, an attorney can spot other potential grounds for refusal, such as:
- Descriptiveness (if the trademark merely describes the goods or services)
- Failure to function as a trademark (if the mark is generic or lacks distinctiveness)
- Other legal obstacles that could delay or prevent registration
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By addressing these issues early, a trademark attorney helps reduce costs, avoid delays, and improve your chances of successful registration.
If you have any questions about trademark searches or registration, contact Ortynska Law at [email protected] or call +1 (914) 703-5632.