Searching for Prior Trademark Righs

Can I conduct a search myself?

Many pop business books suggest that you can accomplish a competent search of existing trademarks by looking for existing uses of your proposed mark in the yellow pages, trade journals, the Internet, and the trademark databases available in certain public libraries, called depository libraries. Even though this site provides information on how to conduct a search, in most instances you are far better off paying a professional search service to conduct the search for you. In doing so you save countless hours getting up to speed on what to search for, and conducting the actual search. Since computer formulas are now used to generate search criteria in many search firms, you can also rest assured that nothing is being overlooked. Finally, if you are sued some day for alleged infringement, you will have an independent record of a trademark search, and are less likely to be challenged on the basis that your search was not as thorough as it should have been.

Once you commission a search report from a professional search firm, you will definitely want an attorney to interpret the results. That is because determining whether or not a mark is available for use is defined by a complex and extensive body of legal principles. Unless you absolutely have no cash or loan money available to pay for a professional search and legal opinion, you are probably far better off paying the $500-$1,000 (on the average) for a competent search and legal opinion.

Pliam Law Group, PA will gladly arrange for your trademark search by one of the most widely used and well-respected search firms, Thomson & Thomson. While other search firms are cheaper, we believe the Thomson databases contain more extensive and higher quality information. We will supervise their search strategy and draft a legal opinion of their results. For more information, visit our firm web site, or contact us.

A final caveat: since most trademarks are not registered, it is impossible to determine with 100% certainty that a competent search has uncovered all potentially problematic trademarks. Thus, companies have to be satisfied that they have minimized their risk to the extent possible, and accept that there is never a guarantee that another user of the mark may surface years later. However, if you have a trademark registration, you can apply for "incontestability status" at which point you can stop worrying about prior rights. While your mark does not become incontestable with regard to every possible legal issue, having an incontestable mark greatly reduces the likelihood of future challenges. To learn about other benefits of registration, click here.

Availability of Your Mark (i.e. Clearing a Mark)
Once you have chosen a legally protectable mark, you will next need to conduct a reasonable search of existing marks to make sure your proposed mark does not infringe or dilute an existing mark. This process is referred to as "clearing" a mark. The purpose clearing a mark is twofold. First, you want to make sure you will not be on the line for an infringement of another company's trademark once you start using the proposed mark. Second, if you want to register your mark federally, you don't want to waste the fees associated with the preparing the application and the filing fee, if you can establish ahead of time that the mark is already being used.

The search you need to conduct will depend on your case. For more information on how to conduct a search of prior rights in your proposed mark, click here.

Once the search is done, you will want an attorney to interpret the results. This is because the analysis of whether a proposed mark infringes an existing mark involves a highly complex body of case law which attempts to delineate when a mark is likely to cause confusion among consumers. The legal analysis provided by an attorney is commonly referred to as either a clearance opinion or an availability opinion. Pro se (self-help) parties should not undertake this task lightly, as it usually involves fine interpretation of a complex body of case law.

Pliam Law Group, PA will not only provide a clearance opinion at a reasonable fee, but we also arrange and supervise the professional search firm's search criteria at no cost to you when you hire us to provide the availability opinion.

Consequences of selecting a mark that is already being used.
If the mark you select is either confusingly similar to an existing mark or if your mark is similar to a famous mark, you may be forced to give up your mark, even after several years of building name recognition and many thousands of dollars spent in updating packaging, advertising and letterhead. Furthermore, if the mark you infringe is federally registered, you will have to overcome a presumption that you infringed willfully. If you cannot overcome this presumption, or if there is evidence of willful infringement, you can be liable for triple money damages, profits, attorney fees, and more. Of course, you are free to use a mark that is already being used as long as it is not confusingly similar or not highly similar to a famous mark.

Assuming you agree with why it is necessary to search for prior uses of your trademark, the obvious next question is, how? The how in this case includes:

Tips for Pro se (Self-Help)
If you absolutely cannot afford the services of a professional search firm or attorney, this is an area where doing something is absolutely better than doing nothing at all. At a minimum, you should conduct a search of existing and pending state and federal trademark databases. There are sites on the web that do this for a very modest price. You should also search yellow pages and the Internet for marks in your industry.

There are a couple problems to this approach, although taking these minimal steps are far better than conducting no search whatsoever. The first problem with a manual search through the Yellow pages, trade journals, and the Internet is that it is extremely time consuming if done at all properly. Such a search is not properly conducted when only the exact mark is searched. You must also search all marks with similar meaning, similar sound, and similar visual affect. Furthermore, the question of how similar is similar is not easily defined. However, if you broadly define similar, and you diligently search every industry that is related to yours, this technique can be satisfactory. For obvious reasons, this approach is only feasible if your businesses operates entirely in one location and you have no plans for expansion. Otherwise, you would have far too many yellow pages to search. However, even if you operate entirely in one location with no plans for expansion, you should also search all surrounding locations too. That is because surrounding businesses may have plans for expansion into your area. The question of what constitutes a surrounding area is also not easily determined, since the world is effectively shrinking from a trademark perspective.

This is not to say a search such as this will be legally sufficient, if you ever had to go to court. However, not doing at least this much is inviting trouble. When you need help deciphering the legal standards required to clear a mark, Pliam Law Group, PA will gladly advise you along the way.

Scope of Your Search

The scope of the search, including the region in which you conduct the search and the industries within which you search is dependent upon where you intend to use the mark, how much money you are willing to spend in a search, and your tolerance of the unknown. Generally speaking, a good search will include identical marks in all industries, and confusingly similar marks within your own industry or industries.

It is unrealistic for most companies to conduct an exhaustive search, assuming that was indeed possible. Therefore, most companies balance their tolerance for risk with the amount of money they are willing and able to spend. The standard search described below may be more than some can spend, and less extensive than others may wish to perform. What is important, is that you find a happy medium for your company. If you are both limited in funds and intolerant of risk, you can expect feeling quite dissatisfied with the trademark protection process. However, it is an area where investing something is truly better than investing nothing at all.

Which Regions to Search

In a global economy it no longer makes sense to search only the small region in which you will be marketing your products or services. That is not only because of the Internet, but also because of a doctrine that extends trademark rights to a company’s "zone of natural expansion." As the name of the doctrine indicates, a company may sometimes have protectable trademark interests in regions they have not yet begun to market their goods or services. Whether they can do so depends on whether the company can prove they intended to expand to that region.

For more information, see also:

The Internet's impact on trademarks
Zone of natural expansion

Which Industries to Search

Even if a mark is identical to the one you are proposing to use, you are permitted to use it as long as your product or service is not so similar to those in existence that consumers would be confused as to who was who. Thus, searches can often exclude entire industries that have nothing to do with the product or service of the proposed mark.

One significant exception to this is for "famous" marks, which are protected by the law of trademark dilution. The number of marks that may be considered "famous" is startling, and thus you should search for identical marks in all industries. This still leaves open the possibility of excluding from your search similar, but non-identical marks being used in unrelated industries.

What to Search For

There is a common misconception that all one needs to search for are marks identical to the one proposed. In reality, this includes not only identical marks, but also those that look or sound similar. You might ask, how similar is too similar? or similar in what kinds of ways? These questions can only be answered by a complex body of law that defines the term, confusingly similar.

Because of the legal complexity involved, it is wise to have an attorney involved in the search process. Typically, this entails having an attorney define the parameters of the search (usually in conjunction with professional search service), and draft a legal opinion as to the degree of similarity that the proposed mark has in common with existing marks. This opinion is generally referred to as a clearance opinion or availability opinion. Click here to see Pliam Law Group, PA’s fees for providing an availability opinion.

Depth of your Search
There is virtually no limit to the amount of money you could spend in conducting an exhaustive trademark search. However, most companies find that a search of existing and pending State & Federal trademarks, together with a common law search provides a reasonable balance between risk reduction and expenditures. Of course, If you are less risk tolerant, and have the extra cash, you may prefer to supplement the standard search in various ways that may be appropriate for your particular situation.

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IMPORTANT NOTICES & DISCLAIMERS: By viewing the contents of this web site you acknowledge that you have read and understood this paragraph. Pliam Law Group, PA intends this law page to be a resource on federal trademarks. The information contained herein is offered "AS IS," and no warranty is made as to its timeliness, quality or accuracy. While Pliam Law Group, PA is authorized to answer questions of federal trademark law, questions regarding state trademark law should be directed to attorneys in your own state. You should further be aware that every legal matter involves a variety of factors that cannot be addressed via the generalized content provided in a web site. Thus, the information provided herein should not be relied upon as legal advice, should not substitute for legal counsel, and does not create an attorney-client relationship. Finally, even though this web site addresses trademark law exclusively, nobody at Pliam Law Group, PA has any certification or specialization in trademark law, and no such certified specialization exists in the United States.