Filing an application for a registered trademark is an important step for a business. Business owners and consumers alike understand the importance of a registered trademark. The process to obtain a registered trademark is not as simple as filling out an application and paying a fee, however. It starts with a comprehensive trademark search to ensure that you are not infringing on someone else’s trademark or intellectual property. This comprehensive search is more challenging than simply searching for the words or logo you have chosen. If you are ready to file for a registered trademark, contact the experienced intellectual property attorneys at Polymath Legal PC at 833-931-6418 to discuss how we may be able to help you.
Criteria That Prevents Your Trademark Registration
Before you can start the process of searching trademarks, you need to make a decision regarding your own trademark. When creating your own trademark, consider the following that may increase your chances of obtaining a registered trademark through the United States Patent and Trademark Office (USPTO).
Criteria That Will Cause Application Rejection
If these three criteria are met, your trademark will not be registered because it creates a likelihood of confusion:
- Similar to Another Trademark: If your trademark is too similar to another already registered trademark, yours will likely be rejected.
- Used On Related Products or Services: If your trademark name or mark is too similar to related products or services then it may also be rejected.
- Live: If a trademark matches or is similar to yours, and is live or pending, your application will also likely be denied. However, a match to a dead trademark (one that is abandoned or canceled for specific reasons) may not prevent you from registering your trademark. Before using a trademark that is similar to a dead trademark, you may want to consult an attorney to discuss all of your legal options.
What Is Likelihood of Confusion?
Your trademark will not be registered when it will create a likelihood of confusion. Likelihood of confusion does not mean two trademarks must be identical. Likelihood of confusion means that two trademarks must be similar enough in appearance, sound, meaning, commercial impression, or to other products or services sold that the average consumer would be confused about the source of those services or goods.
It is also important to note that some trademarks will still not be registered, such as ones that are already famous, even if there is no likelihood of confusion. The USPTO will not register these marks because the trademark owner can claim trademark dilution.
The Difference Between a Preliminary and Comprehensive Search
Once you have made a decision regarding the trademark you wish to register, you may feel like the next step is to file your application with the United States Patent and Trademark Office (USPTO). However, before you file that paperwork, there is another step: the trademark search. There are two types of trademark searches you can do: a preliminary and a comprehensive.
Preliminary Search
The preliminary trademark search is often referred to as a “knock out” or “exact match” search. This kind of search only finds the most obvious problems, such as trademarks that are exactly the same. A preliminary search will not find the subtle similarities that can still cause your trademark application to be rejected. It is important not to rely exclusively on a preliminary trademark search to file your trademark application. If your trademark passes the preliminary search, you should then consider visiting with an experienced intellectual property attorney regarding a comprehensive trademark search.
Comprehensive Search
A comprehensive search is much more thorough than the preliminary search. This type of search uses proprietary software and checks multiple third-party databases to look for even the smallest similarities between your trademark and one that already exists or is pending. This type of trademark search takes longer, but it can significantly reduce the chances of your application being rejected.
Because the databases and software used for a comprehensive search are held by specialized search firms, you will likely need to visit with someone that has access to these databases, such as an experienced attorney at Polymath Legal PC.
Understanding the Comprehensive Trademark Search
A preliminary search uses a public database to check for obvious problems with your trademark. A comprehensive trademark search is much more thorough, using three different and specific searches to make up a more complete search for similarly registered intellectual property. While a comprehensive search still does not guarantee that your trademark application will not be rejected, it does significantly reduce the chances of a rejection.
Federal Trademark
A federal trademark search compares your trademark to ones that are live and pending as federal trademarks. Federal trademarks apply to the entire United States. This search is done using the USPTO database and examines factors such as spelling, foreign language equivalents, pronunciation, and other factors that may impact your ability to register your trademark.
State Trademark
Smaller local businesses may not register for a federal trademark. Instead, they may file for a trademark in their state, especially if they do not intend to expand beyond their local area or region. Even a state-registered trademark can prevent you from registering your trademark on a federal level. This type of search checks the state databases for all 50 states to make sure your trademark does not infringe on a state-registered trademark. Polymath Legal PC may be able to help you decide whether you want to file for a state trademark with the California Secretary of State or with the USPTO for a federal trademark.
Common Law Trademark
After searching registered lists and databases, the last part of a comprehensive trademark search is a common law trademark search. Some businesses do not file for trademark protection at all. They simply create their name and logo and use it in the stream of commerce. Failing to file for trademark protection does not always prevent you from filing your application.
The common law trademark search will look for others in your industry using the same name or one that is very similar who have not filed for trademark protection. This type of search may also look for domain names and other signs that someone is already using the name or logo or one that is very similar.
Potential Consequences of Not Doing a Comprehensive Search
A comprehensive search can be expensive and will take longer than a preliminary one. However, the decision to forgo the comprehensive search can have significant consequences.
A few of the potential consequences of not doing a comprehensive search may include:
- A Rejected Trademark Application: If you submit your application and a similar trademark is found, your application will be rejected. This means you will have to apply again after creating a new trademark. Your application fee will not be refunded, and you will have to pay another application fee when you file again.
- Wasted Money: Aside from the trademark application fee, you may have also wasted money on branding, marketing, packaging, etc. that showcased the rejected trademark. You will not be able to get that money back, plus you will be left with the unusable materials. You will also need to spend more money on new branding, marketing, packaging, and promotion.
- Possible lawsuit: If your trademark is approved, and a similar one is pre-existing, you could face a lawsuit for trademark infringement. If you lose this lawsuit, you could be expected to pay the other party’s attorney fees and the costs of the court action, plus damages for the infringement. Depending on the size of your business, this could be potentially devastating to your business.
Are You Ready To Apply For Your Trademark?
If you are ready to apply for your trademark and your next step is the comprehensive trademark search, contact Polymath Legal PC at 833-931-6418. Our experienced intellectual property attorneys can help you with your search and filing your trademark application.