When adopting branding, such as a brand name or logo, people sometimes wonder, “Do I need to conduct a trademark search?” Or, “Is this trademark available?” These questions can arise when considering filing a new trademark application. Or they can come up when adopting branding for new products or services being offered for sale. In either context, this question should be considered at some level. What follows is more detailed information about whether and when a trademark search is worthwhile. Another article covers how to structure a trademark search.
What a Trademark Search Can Tell You
Some brand names and logos are already taken by others. In fact, it is quite common that when you have a “great” branding idea someone else has already had the same idea or a similar one. A trademark search can help address either or both of the following questions:
- Will proposed branding create a significant risk of infringing someone else’s existing trademark?
- Will a given proposed trademark be registrable?
The first question is about trademark clearance or freedom-to-operate. It is about assess risk and trying to avoid infringement problems and disputes. The second question is about whether a given jurisdiction is likely to grant you a trademark registration. It is more about how protectable a proposed mark appears to be. Put another way, the second question can inform you about the scope of exclusivity potentially available under the proposed mark. But both questions are about trademark availability.
A single trademark search in a given jurisdiction can generally be used to analyze both of these questions. So one search should permit both legal questions to be addressed. But the scope and thoroughness of a search can vary.
What a Trademark Search Won’t Tell You
In the strict sense, simply searching for trademarks tells you very little. It will only produce a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Also, simply obtaining a list of prior trademarks will not tell you whether a proposed new mark is distinctive enough to serve as a trademark. And a search alone will not address other strategic considerations involved in trying to register a particular trademark.
After obtaining search results, it is necessary to further analyze whatever comes up in a search from a legal perspective. Anyone who does not understand trademark law will struggle to properly interpret what is or is not a problem when it comes to infringement risk and obstacles to registration. Self-serving bias is a common issue too. When you have a great branding idea, you might be biased against the notion that someone else already has a trademark that presents an obstacle to your business plans. This can turn into a matter of unreasonably splitting hairs over illusory differences. Or it can lead to incorrectly disregarding inconvenient or disappointing search results.
It helps to have a knowledgeable and independent expert analyze search results and provide guidance about registrability and/or any infringement risk. This kind of legal analysis goes beyond searching alone.
Which Region or Regions?
Trademark searches should be considered for each relevant region. That is because trademark rights are territorial. They exist only in particular jurisdictions, that is, in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. If new branding will be used in multiple countries, a trademark search (or series of searches) should ideally encompass all of them.
Is a Search Legally Required?
In the United States, it is not required to perform a trademark search before applying to register a mark. So, it is possible to proceed without a search and take your chances. But it is a gamble.
But, on the other hand, investing considerable effort and resources into developing and advertising a brand only to find out later that it cannot be protected may lead to crushing disappointment. And it may result in wasted time and money. Having to rebrand later on after a problem arises is usually far more expensive than the cost of an initial search and analysis. On top of that, legal liability and even merely a cloud of uncertainty can have a terrible impact on a business, from disruption of daily operations to decreased valuation.
An early trademark search encourages adoption of a non-infringing and registrable mark from the start. The cost and burden to switch marks or re-brand generally increases over time. So even if a search is not mandated by law, obtaining one along with a legal opinion still offers pragmatic benefits. Those steps can potentially avoid a lot of later headaches.
Didn’t I Already Take Care of This?
You still want a trademark search despite having registered a company or assumed name with a local government. The same goes for having already registered a domain name containing your trademark. The fact is that practically no screening is performed by the government or a domain registrar. They only care about such names having the slightest differences. Corporate filings and domain name registrations are accepted when there are only minor differences in terms of punctuation or a single different letter. That is not enough to avoid trademark problems. Trademark confusion and infringement (and/or cybersquatting) is still possible in those situations.
Small businesses often mistakenly believe that corporate and domain name filings insulate them from legal problems like trademark infringement. But they don’t.
When is a Search Needed?
In terms of timing, a trademark search should be performed before any new brand is adopted and used. In other words, the ideal time for a search is before you commit to a particular trademark and before you start actually using it. But searches can still be worthwhile later on. For instance, as usage changes to encompass different goods or services, or expands geographically, new issues might arise that call for a new or further trademark search. Special types of searches may also be useful during examination of a trademark application or in connection with a contentious proceeding.
Further, a trademark search is just snapshot at a given moment. Use of similar marks by others is constantly changing. Prior registrations are abandoned or cancelled, commercial usage changes, consumer perceptions evolve, and new brands are adopted by others. This means that trademark search results can go stale and lose relevance as time passes. Ideally, a trademark search should be performed close to when business and marketing decisions are made about the mark being searched. Old search results may not be reliable for a legal review much later in time.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.