Proper trademark searches before the application process help prevent added costs and delays during the trademark application process
Before filing a trademark application with the United States Patent and Trademark Office (USPTO), it is highly recommended that the trademark applicant, or their attorney, conducts a USPTO knockout search and a comprehensive common law search to confirm there are no likelihood of confusion issues that could hold up the application process or cause the trademark application to be denied for registration by the USPTO.
Why are the searches are necessary?
Approximately three months after a trademark application is filed, it is assigned to an Examining Attorney who reviews the application and decides whether it meets all the statutory requirements. If the application meets the statutory requirements, the Examining Attorney will approve it for publication. As part of the review process, the Examining Attorney will search the USPTO trademark database to confirm there are no previously registered trademarks that are confusingly similar to the applied for trademark. If the Examining Attorney concludes the applied for trademark is likely to cause confusion with a previously registered trademark, the Examining Attorney will issue an Office Action.
An Office Action issued based on a likelihood of confusion will delay the application process and can lead to the trademark application being refused for registration. The added delay, and potential refusal of registration add costs to the application process and can ultimately lead to the trademark owner losing all the money they spent on filing the trademark application. It is therefore important to try to foresee any potential issue regarding likelihood of confusion before filing.
In addition to the Examining Attorney finding a likelihood of confusion issue with a previously registered trademark, any third party can oppose the trademark application asserting it is likely to confuse with their trademark during the thirty day opposition period. Any third party opposition filed against a trademark application will again delay the application process, increase the costs of the trademark application, and may result in the Trademark Trial and Appeal Board refusing to register the applied for trademark.
Due to added costs, delays, and potential refusal to register a trademark application based on likelihood of confusion issues, it is desirable to avoid the Examining Attorney or a third party raising a likelihood of confusion issue. The best way to avoid a likelihood of confusion issue is to conduct a USPTO knockout search and a comprehensive common law search prior to filing the application.
USPTO Knockout Search
Before filing a trademark application, a trademark owner, or an attorney acting on their behalf, should conduct an USPTO knockout search. The purpose of conducting a USPTO knockout search is to avoid the Examining Attorney from issuing an Office action based on a likelihood of confusion issue. The best way to conduct a USPTO knockout search is to visit the Trademark Electronic Search System (TESS) and search for any previously registered trademarks or trademark applications currently pending, that are similar to the trademark the applicant is seeking to register.
The different search options within the TESS System
As with any likelihood of confusion analysis, the person conducting the USPTO knockout search needs to balance considerations such as how similar the trademarks are, what are the relevant goods and/or services, where are the goods or services sold, the sophistication of the consumer, etc… The TESS system probably seems outdated to most who use the system, and it is advisable to have the search done by someone who uses the TESS system regularly and understands the nuances of likelihood of confusion issue.
If, after searching TESS, there are clearly no confusingly similar trademarks, the trademark applicant can rest easy that it is highly unlikely they will receive an Office Action based on a likelihood of confusion issue. If there is a trademark that may be similar, but does not warrant refusal of the trademark application, the trademark applicant can begin considering ways to argue around a potential Office Action in the event the Examining Attorney cites the previously registered mark as being problematic due to likelihood of confusion. If there is a direct hit, however, for the trademark being applied for in the same or related field of goods or services, the trademark owner should reconsider filing a trademark application all together so as not to lose their application fee and any attorney fees associated with the trademark application.
Comprehensive Common Law Search
If there are no issues found in the USPTO knockout search, trademark applicants should broaden their search to find any potentially confusingly similar trademarks already being used in the marketplace, but have not been registered at the USPTO. The reason a comprehensive common law search is important is to see if there is any third party out there they may oppose the trademark application once it is published for opposition, i.e. after the Examining Attorney approves the application.
Before the internet, it was difficult to conduct common law trademark searches. They mostly relied on state databases with company names, knowledge of industries and teams of investigators. However, Google searches and social media searches can reveal if any other company sells or uses the trademark or a confusingly similar trademark.
Do not overthink this. Start with Google, then move to social media searches
If there are any hits, and potential issues, found in the common law search, the trademark applicant will need to do more research into the potential problem. For example, if the other trademark owner just began using the trademark, and the trademark applicant has used it for ten years, then the trademark applicant is considered to have “priority” to use the trademark. Or in other words, the trademark applicant has “dibs” on the trademark.
In addition to conducting a common law search for purposes of avoiding an opposition, it is wise for trademark owners to know what other companies out there are using confusingly similar trademarks to their own. It may be best to take action against those trademark owners by sending a cease and desist letter immediately or to continue to monitor their use to ensure they do not enter the market of goods or services the trademark applicant seeks to register the trademark in connection with.
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