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THE PURPOSE OF A FREE TRADEMARK SEARCH

When a trademark knockout search is carried out, a pre-filing search of the USPTO trademark database (TESS) is executed and is designed to analyze identical and/or sufficiently similar marks which may trigger a Likelihood of Confusion rejection by a USPTO Trademark Examiner. This type of search considers only the form of wording in the trademark, without consideration of design and graphical details. Other services outside of this analysis can focus on searching and analyzing design elements for possible similarities.

When a knockout search is carried out, an experienced and knowledgeable trademark attorney can anticipate certain obstacles during the trademark application process and will be able to analyze the legal issues involved in a Likelihood of Confusion analysis. For example, perhaps the prospective trademark is similar to an existing trademark but the goods/services are sufficiently different to obviate any consumer confusion problems. Conversely, an experienced attorney will be able to spot meaningful differences in the marks themselves that distinguish one from the other so that Likelihood of Confusion can be negated. In some cases, it makes sense to proceed with the trademark application, whereas in others, a potential finding should halt the application process and compel the applicant to select a more worthy mark.

The knockout searches carried out by the firm are done with the intention of finding prior filings with similar or identical marks. An experienced attorney can further extrapolate potential ancillary issues that are not immediately obvious, such as the 2(e), “Descriptiveness” refusal. Remember, a trademark that merely describes the goods/services sold under the banner of the trademark is not eligible for trademark registration on the Principal Register. So, if a prospective trademark appears “Descriptive” but the trademark search reveals that the superficially “Descriptive” trademark has actually been approved in other trademark applications, the attorney can help guide the applicant how to best modify the mark to meet this Descriptiveness burden.

At Cohn Legal, PLLC, a knockout search is done as a complimentary service within the trademark application package.

FREE TRADEMARK SEARCHES: COST-EFFECTIVENESS

Managing a startup requires careful consideration of the new company’s financial limitations. Conducting a free trademark search, with the goal of identifying and eliminating any obvious trademarks that simply cannot prevail, will save your startup a great deal of money and aggravation down the line. Rebranding under a new name after receiving a nasty trademark cease and desist letter from a competitor is extraordinarily stressful and can be enormously expensive. The Knock-Out search does not guarantee that your mark will be admitted (or that you won’t be sued by a litigious opponent) but it certainly increases your chances of success.

TRADEMARK SEARCHES ARM YOU WITH DATA

The trademark application process may involve its own minefield of risks, but these risks can be preemptively reduced when a thorough trademark search is done BEFORE deciding on a name. Remember, the trademark search will not only identify obviously preclusive trademarks but will also allow an experienced trademark attorney to identify a strategy of tailoring the new, prospective name in such a way as to avoid infringing on existing names. For example, analyzing an existing trademark’s goods/services can instruct the new applicant how to draft its own description of goods/services that won’t tread on the existing mark/s. This method of more narrowly describing a company’s unique goods/services may minimize probable confusion and thus avoid a 2(d) rejection from the USPTO.

If you build your brand around a trademark that is ultimately rejected by the USPTO, product development and marketing under the old name will have to be entirely recreated. To mitigate these risks and increasing a company’s chances of branding-success, it is simply the right decision to first fully analyze the prospective trademark for potential barriers by conducting a thorough trademark search.