Trademark Search

Performing a trademark search is a crucial step before adopting and applying to register a trademark.  Yet, surprisingly, it is a step that is often skipped.  A trademark search will alert you to potential legal problems on the horizon before it becomes too late.  Individuals and companies who fail to perform a trademark search early on often come to regret it when they later find themselves embroiled in expensive legal disputes or needing to change their trademark—both of which could have easily been avoided.

What is a trademark search?
A trademark search is a search of various types of databases and information related to existing names and trademarks for certain goods or services to determine whether a proposed trademark is available for use in connection with the goods or services to which it pertains.  Trademark searches are also referred to as clearing a trademark, trademark clearance, trademark availability searches, and sometimes trademark opinions.

Are there different types of trademark searches?
There are several types of trademark searches that can be performed, depending on your budget and goals.  These range from simple searches of the Patent and Trademark Office’s registers (i.e., direct knock-out searches) to comprehensive searches of multiple resources, such as state trademark registries, directories, publications, the Internet, and other common law sources.

What are the benefits provided by a trademark search?
First, and most importantly, a trademark search will tell you whether someone else may have already adopted the identical trademark or a highly similar one.  If you adopt a trademark that is already in use by someone else, you may be inviting a trademark infringement lawsuit, and, if you lose the lawsuit (or settle), you may have to pay monetary damages or discontinue use of your trademark or both.  Second, a trademark search will turn up any prior trademark registrations or pending applications that are likely to prevent you from registering your trademark with the Patent and Trademark Office.  This will save you the time and money of filing an application to register a trademark that has little chance of actually getting registered.  Third, but not least, a trademark search will help you assess the relative strength of your mark by showing you how many other similar trademarks are out there in the marketplace.

What are the disadvantages of peforming a trademark search?
There are no real disadvantages to a trademark search.  However, to the extent a trademark search discloses that your proposed trademark is not available, you will then have to select a new trademark.  As a result, you may need to incur additional costs on a second trademark search.  However, these additional costs are more than outweighed by the money saved by avoiding the substantial legal fees that would result from a trademark dispute or lawsuit, as well as internal costs that may have been incurred, for example, in printing company materials, such as product brochures, or website pages that use the trademark

When should a trademark search be performed?
Once you have selected two or three trademarks that you like and are considering adopting, it makes sense to undertake a trademark search.  Pick your favorite trademark and perform a direct knockout search of the U.S. Patent and Trademark Office’s records.  If the search reveals that your trademark is not available, then move on to your second favorite mark, then the third, etc.  If the search does not reveal any problematic marks, then you can commission a comprehensive trademark availability search to see if any other databases disclose any potential legal problems.  You may also want to consult a trademark attorney early in the selection process to obtain general information about the relative strength of your proposed trademarks and whether they meet other critera for registration.

How much do trademark searches cost?
Trademark searches vary in costs.  On the low end, you can hire an attorney to do a simple knock-out search for direct hits (i.e., identical marks) in the U.S. Patent and Trademark Office’s database.  These can usually be done in an hour or less, so you will be paying your trademark attorney’s hourly rate.  If you want a more comprehensive search, you can order a comprehensive trademark search form a search company such as Thomson CompuMark or CT Corsearch.  These usually cost around $600-$700, although you may want to use an attorney to assist in crafting the search criteria to be used in the search in which case you will pay for your attorney’s time.  If you want your attorney to review the search, you will be paying your attorney’s hourly rate to do so – search reports can usually be reviewed within 1-2 hours.  On the high end, you may want a trademark opinion from your attorney, which typically cost several thousands of dollars.

Can I perform a trademark search myself?
You could certainly try to do the trademark search yourself.  However, unless you are a trademark attorney, you are unlikely to know whether a disclosed trademark presents a legal problem.  Accordingly, it is best to have a trademark attorney do your search.  After all, the whole point of the search is to learn whether you will be running afoul of trademark law by adopting your proposed mark.