What should a trademark search involve? How should a trademark search be conducted? These are questions about the scope and format of a trademark search. There are many different ways of performing trademark searches that vary in scope and thoroughness. Not all searches are equal. The right approach will depend on a number of factors including the purpose of the search and the type of legal questions the search is meant to address. The following is an overview of basic considerations about how to structure a trademark search to meet your needs.
Different Types of Searches
Sometimes trademark searches are grouped into different levels, with different pricing. A basic search is sometimes called a “knockout” search. These are usually the cheapest option. Names like “comprehensive” are applied to other types of searches that are more thorough (and more expensive). There are also special searches for various specific purposes, such as to look for evidence of relatedness of goods and services. But what differs between these different searches in terms of what you get? And which one is the right choice for your circumstances?
Knockout Searches
A knockout or preliminary search is usually the most basic and most limited in scope. It is typically limited to searching only registrations and pending applications in a particular jurisdiction. This means it will not capture unregistered uses of similar trademarks that may exist.
Also, a knockout search may be limited in terms of capturing variations. Trademarks do not need to be identical to create problems under the likelihood of confusion standard. The exact scope of knockout searches can vary. But often they will provide little or no identification of alternate spellings, phonetic equivalents, translations, distinct terms with a similar meaning, or the like. Yet prior trademarks that are not identical can still create a likelihood of confusion in some situations.
If a knockout search is all your budget permits, it may be better than nothing. But often a knockout search is often too limited to provide a lot of value. For example, for a trademark clearance or freedom-to-operate in the United States where unregistered “common law” trademark rights can exist, a knockout search is generally inadequate. And even for merely preliminary purposes some “bargain” searches may fall short. Quite frankly, cheap searches are not always reliable.
More Comprehensive Searches
A more comprehensive or full trademark search is usually just what the name implies. It is a broad search meant to capture as much as is feasible within a reasonable budget. More comprehensive searches will typically assess any unregistered prior uses. These searches also usually devote much more effort toward searching for alternate spellings, phonetic equivalents, and different words with similar meaning. But beyond those typical parameters, the exact scope of these searches can still vary. There is a continuum of effort involved.
For example, sometimes, but not always, they will address registrations in U.S. states, territories, and districts too. For marks used only locally, and not in interstate commerce, such a state or similar registration might be the only type available. Searching all such state-level registrations can add significant extra expense to a search and therefore is frequently omitted.
Also, whether foreign words are searched will also vary considerably. There are many languages and whether wording of a proposed mark would be considered relevant to one with a similar meaning in another langue is very context-dependent. It can matter if the other language is commonly spoken in a relevant area. For these reasons, translations will usually be considered like separate searches and excluded from even fairly comprehensive searches.
Special Searches
There can also be other types of trademark searches meant to address very particular questions. For instance, there can be situations during the examination of a trademark application or in connection with a lawsuit in which certain trademark searches are useful. These can include searches for evidence of relatedness of goods and services, by looking for usage of a single brand with different but “related” goods/services. Also, trademark-related searches might be performed to identify evidence of genericness or of descriptive meaning of the the words of a given mark.
Geographic Scope
Every trademark search should consider the particular jurisdictions of interest. That is because trademark rights are territorial. They exist only in 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. A search for trademarks in one country will tell you little or nothing about trademark rights in other countries.
If new branding will be used in multiple countries or geographic regions, a trademark search (or series of searches) should encompass each and every one of them. Even if a trademark will not be used in other regions immediately, if expansion to them is likely or merely possible in the future it may help to search those countries too. This can allow evaluation of possibilities for later geographic expansion. This avoids being boxed-in and finding later expansion stymied.
For very substantial brands, with large advertising campaigns planned, it may also be worthwhile to search other jurisdictions to identify potential priority claims. This is because an international treaty may permit an application to be filed in a country of interest that claims priority to an application filed in another country up to six months earlier. In other words, this means searching in countries beyond those you plan to use your mark in. Although this sort of step is often skipped due to the effort and cost and the relative infrequency of such priority claims causing problems.
Which Types of Search Is Right for You?
The type or scope of searching that fits your needs will depend on the nature of the proposed use of a trademark and the particular legal questions you want to address. And your budget. But bear in mind that a search alone tells you little or nothing unless the search results are analyzed by knowledgeable trademark counsel. It is all too easy to misunderstand the significant of bare trademark search results if unfamiliar with trademark law. You need a legal opinion too. Running a few queries yourself in a trademark database and (supposedly) getting “no results” may only provide false confidence.
Another way to think about all this is to ask, “How difficult would it be to later re-brand later?” If the answer is “difficult”, then a broader and more thorough search and analysis is worthwhile. When you are not well positioned to pay legal fees to defend yourself against infringement allegations, or just the thought of having to do this later seems unpleasant, then a search is one way to try to reduce those risks upfront. These things point to doing more than a cursory knockout search. Yet a slogan or tagline might be easily dropped or changed in some situations, unlike a primary brand.
More limited searches are better suited to low-stakes situations. For instance, when you are only concerned with registrability in the short term, such as for a planned intent-to-use (ITU) trademark application, then a knockout search may be minimally adequate. During examination of new U.S. federal trademark applications, the U.S. Patent & Trademark Office (USPTO) only looks at prior federal registrations and pending applications. They do not search for unregistered “known marks”. So a knockout search is similar in scope to searching done by a trademark examiner. But a knockout search will usually not provide a very good picture of all possible oppositions or cancellations sought by others against your desired trademark registration.
Have a Backup or Alternate Mark In Mind
It is quite common for a trademark search to reveal a potential problem with a proposed mark. For that reason, it is often helpful to conduct searching against a list of multiple candidate trademarks. These could be ranked in preferential order. Having a list of multiple marks searched and then legally reviewed in parallel or in preferential sequence increases the chances that at least one of them will be available and registrable. This can be especially beneficial when clearing a mark planned for use in many different countries or regions.
Of course, working from a list of multiple candidate trademarks makes the most sense before you have committed to certain branding. That can be challenging for many businesses. There is a tendency to grow attached to desired branding. But the pain of giving up on a favorite only gets worse if you have to re-brand later because of a problem.
Caution: No Search is Perfect
No matter how thorough, no search can eliminate all risk when selecting and adopting a trademark. Searching is always imperfect and can only serve to minimize risks. Trademark rights in the United States arise primarily from use and not mere registration. So it is possible that someone is using the proposed mark (or a similar one) in connection with the same or similar goods and/or services, but that use may not be detected in the search. That could be because the prior user did not seek registration or a prior mark was not listed in any of the resources or databases that the searcher used.
Also, when it comes to the analysis of search results, there can be differences of opinion. A prior user or registrant noted in this search may object to use or registrations of a proposed mark. Such objections may be questionable or even baseless at times. That is sometimes called trademark bullying. Or there may be facts that influence the ultimate outcome of a dispute that the searcher or attorney was not aware of.
The main takeaway is that just because a search does not identify any problems does not mean that an infringement allegation or refusal of registration is impossible. The right search and a competent legal analysis can still be quite useful and valuable.
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.