There is no requirement in the law to perform a trademark search before applying for registration. However, performing a trademark search is an important step to take to protect yourself from expensive legal problems later on. Before you commit money to marketing and advertising of a business name, signature service, or the name of your product, a good idea is investing little money and time at the beginning – to see if there is anything that might come up later that could cost you a lot more time, money, and trouble down the road.
The best way to avoid issues later on is to conduct a search of the marketplace for the same or similar marks or other issues that might keep you from registering your intellectual property. More importantly, failure to do a proper search might put you on the wrong end of a cease-and-desist letter, an unfair competition, and/or a trademark infringement complaint in federal court, or an order from a judge forbidding you from using your trademark and maybe even forcing you to destroy all of the advertising you’ve invested and/or pay damages and attorney’s fees.
Failing to complete a trademark search can make you more vulnerable to lawsuits and damages. see International Star Class Yacht Racing Ass’n v. Tommy Hilfiger U.S.A., Inc., 80 F.3d 749, 38 U.S.P.Q.2d 1369 (2d Cir. 1996); Tamko Roofing Products, Inc. v. Ideal Roofing Co., Ltd., 282 F.3d 23, 61 U.S.P.Q.2d 1865 (1st Cir. 2002). Failing to perform a search, by itself, is not usually enough to show bad faith or intent. see 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC., 447 F. Supp. 2d 266, 283 (S.D. N.Y. 2006), judgment aff’d, 247 Fed. Appx. 232 (2d Cir. 2007); Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 48 U.S.P.Q.2d 1503 (2d Cir. 1998). However, all of those cases cited there have one important thing in common – they were all expensive for somebody, and a lot of that expense could have been avoided with a quality search on the trademark databases and through the common law uses.
The USPTO makes a lot of the information – registered trademarks and pending applications, and most of the documents created in the application processes – available for free on the Trademark Electronic Search System (TESS). There, you can search registrations and applications by different parameters, like the name of the mark, the goods, and services, the owner’s name, and even the attorney’s name. The World Intellectual Property Organization (WIPO) has a trademark database portal that accesses international and regional intellectual property offices.
However, just making sure that someone isn’t already using your exact name in a registration or application is not enough to know that you’re in the clear. Trademarks have rights before they register. Rights come from use in commerce, not from registration; registration gives other benefits to trademark owners. However, unregistered marks have rights, too. So, doing a search for the same or similar names outside of government offices is also necessary. Usually, this begins with searching several terms in a search engine like Google, and checking Internet marketing platforms on social media and other places, depending on the industry. The searcher also needs to take into account the goods and services that the mark is supposed to represent.
Compiling and interpreting that information, including multitudes of other considerations, requires knowledge and experience with trademarks, and most people have difficulty balancing the responsibilities of running their business. If you’d like some help with this, let’s discuss it in a Free Consultation, and we’ll talk about whether I can help get you through this process with minimal exposure and vulnerability.
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