The scope of a trademark search may vary from one country to another, as each jurisdiction adopts its own regulatory framework regarding trademark registration. This article will identify the types of trademark searches that can be performed when seeking registration of a mark in the U.S. It is advisable for owners of marks in the U.S. to seek professional assistance with the search and registration stages of their trademark.
Performing a trademark search in the U.S.
A trademark search in the U.S is performed by investigating the USPTO’s trademark database to discover the availability and uniqueness of a mark that is seeking registration. The USPTO is the official abbreviation for the United States Patent and Trademark Office, and is the responsible registry for approving for rejecting trademark and patent registration applications throughout the U.S.
The USPTO trademark database is available online for the public to view. However, it is advisable for owners to enlist the professional services of a trademark attorney or consultancy firm to perform the search as interpreting the search results can be particularly difficult for those who are not familiar with the trademark industry.
There are 3 main ‘types’ of trademark searches that can be performed in the U.S.
Common Law Search
This type of search helps to identify trademarks that are in use but which are not official registered. It is important for owners to know whether their mark is already in use, even if the existing mark is not registered, as unregistered marks that are used in a commercial capacity are awarded certain intellectual property rights. Many unregistered trademarks are used commercially in the U.S as the owners are not legally obligated to register them, therefore, the results of a common law search can be vast, and difficult to quantify. It is one of the most costly searches to perform but is also one of the most important.
A state search refers to the investigation of trademarks that are registered in a certain U.S state. This is a particularly difficult type of search to perform because many states do not have trademark databases available online to the public. It is therefore essential that a trademark attorney or consultancy firm is contacted to perform the search on the owner’s behalf as they will have access to the databases.
The most common type of search performed is the federal search, which involves researching the USPTO trademark database for marks that are the same, or confusingly similar, the mark seeking registration. A federal search is relatively straightforward to perform and inexpensive. Owners of a mark who wish to conduct the federal search themselves can do so by using the TESS (Trademark Electronic Search System). The TESS is not as comprehensive as the federal search with the USPTO database however, so it is advisable to enlist the services of an industry professional to perform the relevant search.
Overall, conducting a trademark search, whether it is a common law, state or federal search, can be a time consuming and complex activity if you are not experienced in the trademark industry. However, owners of marks are still encouraged to perform a search prior to submitting an application for trademark registration as it demonstrates to the relevant authorities that due diligence and good faith were executed at the time of registering the mark.
For information on registering a trademark, or to find out how we can assist you with your intellectual property needs, please Contact Us.