Trademark searching helps to identify prior rights that might conflict with your trademark. The U.S. Patent and Trademark Office (“PTO”) recommends searching to help avoid future costly legal problems:
Conducting a complete search of your mark before filing an application is very important because the results may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application. A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and/or difficult to protect. . . .
Be aware that any searches you conduct on TESS [the search feature on the Trademark Office website] are limited to the USPTO’s database of federal trademark applications and registrations and do not include the marks of other parties who may have trademark rights but no federal registration. . . . Because searching is very complex, you should seriously consider hiring a trademark attorney to assist you . . .
“Protecting Your Trademark,” U.S. Patent and Trademark Office.
Choosing a Search Level
We offer three levels of searching to meet your budget needs and risk tolerance. A more comprehensive search, such as a Level 2 or 3 search, can be important because in the U.S. use of a mark, even without registration, can create trademark rights. Level 2 and 3 searches are designed to find potentially conflicting rights that have not been registered with a trademark office.
When deciding how much to invest in a trademark search, consider the importance of the mark to you and the following questions:
- Will you make limited, short-term use of the mark, or will you use the mark for a number of years or indefinitely? If your use will be very limited, it might be reasonable to rely on a Level 1 search. If you intend longer use, you should also consider a more comprehensive search, such a Level 2 or 3 search.
- Will the mark be used in a significant branding or marketing initiative? If so, you should consider a more comprehensive search, such a Level 2 or 3 search.
- How easy would it be to stop using the mark and adopt a new mark if someone claims that the mark infringes his or her rights? Consider not only products that you might have to recall and relabel, but also the loss of customer goodwill and the cost of new signage, business cards, advertisements, websites, apps, etc. The higher the cost of rebranding, the more you should consider a more comprehensive search, such a Level 2 or 3 search.
- How much profit will you make from your use of the mark? Consider both direct profits (such as the profit made on the sale of a product or service bearing the mark) and indirect profits (such as increased sales of other products and services attributable to your use of the mark). If a court finds that you have infringed someone else’s trademark, you could be ordered to pay the direct and indirect profits you made from the infringement. Moreover, if a court finds that you willfully infringed, you could be ordered to pay three times your profits. You could also be ordered to pay the attorneys’ fees for the other side.
- How competitive is your market? Competitors have a financial incentive to disrupt your business. A more comprehensive search, such a Level 2 or 3 search, helps you to identify problems before your competitors identify them for you.
Level 1: Preliminary Search
We search a proprietary database that offers greater flexibility and scope than the PTO website. Our search looks for direct or near direct hits for your mark for the same or closely related goods or services among federal trademark filings, state trademark filings, and International Registrations with protection in the U.S. The search does not, however, include unregistered uses of the mark or all possible variations of the mark or the goods and services.
The purpose of a preliminary search is to find obvious obstacles that will knock a mark out of contention early in the selection process at relatively low cost. If a mark survives a preliminary search, you should consider, as a next step, a more comprehensive Level 2 or Level 3 search. We charge a flat fee for performing a Level 1 search, plus the database transaction fees, which vary for each search.
(If you are interested in using your mark internationally, databases that include other countries can be added on to a preliminary search for additional cost. Please note, however, that we are not licensed outside the U.S. and can only review international searches based on general trademark principles, which could vary from the law of any given country. Such searches will also be limited by the languages of the given countries, among other things. For a more comprehensive international search, we suggest use of one of the international lawyers through which we assist clients with international trademark matters.)
Level 2: Extended Search
This search offers a balance between a Level 1 and Level 3 search by using sophisticated search algorithms to search not only federal and state trademark filings but also a variety of proprietary databases that include domain names, company name directories, industry publications, the web, etc. This cutting-edge technology also offers character matching, advanced vowel and character replacement, translations, and semantics to identify potentially conflicting marks.
For those with more limited budgets or needs, a Level 2 search might offer a reasonable compromise between a basic Level 1 search and a “gold standard” Level 3 search. We charge a flat fee for performing a Level 2 search.
Level 3: Full Search
This search is considered by many to be the “gold standard” of U.S. trademark searching. It is conducted by trained search analysts at CompuMark, one of the world’s leading trademark search vendors, and could identify potential problems not found in a Level 1 or Level 2 search. Because of the additional cost, a Level 3 search might not fit everyone’s needs and budget, but if you are looking for the leading, no-compromise search, a Level 3 search might be right for your business.
Analysts conduct this search in CompuMark’s proprietary databases that include industry journals, business listings, domain name registries, state trademark registries, the federal registry, and many other sources to identify prior rights that could pose a risk to you. The search can also cover wider variations of your mark, such as phonetic equivalents, to uncover soundalike marks, marks with similar spellings, etc. The result of a Level 3 search is typically a thick raw report that we will review in detail and analyze to identify risks, which we will discuss with you. For the typical search (under 450 pages), we charge a flat fee to review and discuss the results, plus the search vendor fee.
If you have questions or would like to begin a trademark search, please contact Wade Savoy at wsavoy@patentgc.com.