Trademark protection in the United States operates on a first-come first-served basis. All things being equal, if you are the first to use a given mark for a good or service in a geographic area, you’re going to have exclusive trademark rights to that mark for those goods and services in that area.
By the flip-side of the same coin however, if you’re looking at naming a new product, company, or service in a given market, you better make sure that there’s no one out there already using the same or similar name for the same or similar goods and services, aka a senior user. If there is, and you proceed with using the name anyway, sooner or later it’s going to cost you. That cost could come sooner, in the form of a threat of litigation from the senior user if you don’t stop using the mark. Or it could come later, when your use has grown to a size that you’re looking to secure federal registration of your mark, only to find that someone has already beaten you to it or, by virtue of their senior use, has grounds to oppose or even cancel your federal registration. It could also cost if you if you try to sell your company to someone else, as they’ll do their due diligence and see that they’re buying a company with problematic trademark rights.
The way to avoid these problems is to hire an attorney to help perform what’s called a trademark clearance search. The goal of the search is to identify other companies and marks in use in your intended market that could potentially cause you problems, be it in the form of lost customers, brand confusion or dilution, or obstacles to registration. By identifying problems from the outset, you’ll be able to intelligently decide if it’s worth the risk and potential costs of proceeding with a given mark, or if it’s a better idea to look for a different and less problematic mark. The cost of trademark clearance searches vary based on the sophistication of the search and the number of goods and services you intend to use the mark with (the more classes of goods and services, the more extensive the search will have to be, and thus the more expensive).
Generally, there are two levels of clearance searches. The more quick-and-dirty level search is known as a ‘knock out’ search. These searches are quickly and easily performed by searching the United States Patent and Trademark Office’s database of registered and pending trademarks for any identical or phonetically similar trademarks. If there’s no identical or similar pending or issued marks, then there’s at least the potential that you may be able to proceed with your mark. For some companies, especially those operating on a tight budget for legal fees, or companies with a particularly arbitrary and fanciful mark that’s unlikely to be in use by anyone else, this sort of search can make sense. However, these limited searches do not assure you that you will have exclusive rights to your trademark down the line, even if you are able to secure federal registration for the same.
For that level of assurance, a more complete search is required, which brings us to the second level of clearance searches: “comprehensive” commercial searches. Several companies provide commercial level clearance searches that search hundreds of databases in addition to the trademark office. These additional databases include web domains, common law unregistered marks, corporate registrations, trade name directories, and more – both for the United States and other international markets.
While the details and extensiveness of these commercial searches can be customized, the results provide companies with a much clearer picture of any and all similar uses of their intended mark in the market. These searches are helpful not only from a potential registration standpoint, but also from a market research standpoint, helping you identify your potential competitors and obstacles you may face in establishing brand recognition in other markets. The results can also help you and your attorney craft a legal strategy for successfully acquiring your desired trademark rights by highlighting what potential obstacles (or opponents) might come after you down the line.
The tradeoff of a commercial search is, of course, the increased cost (typically $500 or more). For any serious brand launch however, the costs will almost always be less for a comprehensive search up front than facing problems with registration and/or litigation concerning a problematic mark down the road. Nevertheless, many companies fail to learn this lesson until it’s too late, and their chosen name is already in trouble.
Don’t make the same mistake. A bit of forethought and expense, in the form of hiring competent trademark counsel before you select your new trademark, will save you a world of trouble down the line.