Posts by Zane Tannir

April 1, 2024

Safeguarding Your Brand: Conducting a Thorough Trademark Search

Why Conduct Trademark Searches?

The journey of getting a trademark registration for your brand seems straightforward—think of a name, design a unique logo or phrase, file a trademark application, and voila, your brand is protected. However, this simplified timeline overlooks the potential minefield of intellectual property rights that could send your business into costly legal battles and damage your brand's integrity. Conducting thorough trademark searches before filing can help you avoid these risks by ensuring your proposed trademark isn't infringing on existing rights. This due diligence is not just a precaution; it's an essential step in building a resilient brand identity.

The Pitfalls of Neglecting Trademark Searches

One of the primary reasons trademark applications are rejected by the US Patent and Trademark Office is because they are too similar to an already registered trademark. Identifying any similar trademarks before submitting your application can save your business time and money by ensuring your trademark does not infringe on the rights of another business.

Now imagine a worst-case-scenario where you launch a brand, invest in marketing, and establish a customer base only to receive a cease-and-desist letter for unintentional trademark infringement. The consequences can range from rebranding to compensation for damages—a scenario that could be financially and reputationally catastrophic. Thorough trademark searches act as a shield, protecting your venture from such threats.

Utilizing the Right Resources for Trademark Searches

If you can’t hire an experienced trademark attorney, you need to protect yourself by searching for similar trademarks yourself.  The effectiveness of your trademark search hinges on the resources you utilize. While many free tools offer basic search capabilities, they may not provide the comprehensive coverage necessary to uncover all potential conflicts. In your search, narrow your focus to trademarks that are confusingly similar to yours when used with goods and services that are the same as or related to yours. Here are some resources recommended for a thorough investigation:

1. United States Patent and Trademark Office (USPTO) Database: The USPTO's online database is a starting point for any trademark search. It allows you to search registered trademarks and pending applications, offering a glimpse into potential conflicts within the U.S.

2. Trademark Official Gazette (TMOG): The TMOG is a weekly publication by the USPTO that features all trademarks that received approval for registration in the USPTO database.

3. International Trademark Databases: If your business plans to expand globally, searching international databases like WIPO's Global Brand Database, the European Union Intellectual Property Office (EUIPO) database, TMview, and Madrid Monitor is crucial.

4. The Internet: Common law rights are established once a business begins utilizing a trademark in intrastate commerce associated with specific goods or services. These rights are confined to the state  in which the trademark is used but can affect the rights provided by your trademark registration if another party’s common-law use predates the use supporting your application. Searching the internet for potential uses of your trademark or a similar trademark can prevent infringement of common law rights. 

5. Specialized Search Services: For a more thorough investigation, consider using specialized search services. These services can provide detailed reports on potential conflicts, including similarities in sound, appearance, and commercial impression, which might not be apparent through a basic search.  Be aware though, these commercial search services provide broad results, and many of the trademarks listed may actually not be a bar to your mark.  An experienced trademark attorney can help you parse the results.

Crafting a Legally Sound Trademark Strategy

A well-conducted trademark search is the foundation upon which a legally sound trademark strategy is built. This strategy should consider the distinctiveness of your trademark, potential market expansions, and the evolving landscape of intellectual property rights. Engaging with legal professionals who specialize in trademark law can provide valuable insights and guidance through this complex process. Lloyd & Mousilli and our unparalleled team of legal professionals with years of experience and deep expertise in trademark law stand ready to ensure your trademark is protected and legally complaint.