Any brand-building process starts with ensuring your name/logo/slogan is unique and highly likely to be registered as a trademark at the United States Patent and Trademark Office (USPTO). At times, applicants are relieved merely by the fact that the search they conducted on the USPTO database did not show conflicting marks in the result. However, the matter is not this simple. The USPTO rejects an application for trademark registration for various complex reasons, such as similarity or likelihood of confusion, and so a database search is not enough to ensure that your mark is not in conflict with other marks.
A topic that often comes up during any trademark application consultation is the difference between a preliminary search and clearance versus a comprehensive search and clearance. As a brand owner, it is essential to understand the difference between the two.
What is a Preliminary Trademark Search & Clearance?
Before applying, a competent trademark attorney will conduct a preliminary search of the USPTO database to uncover identical or similar marks. The purpose of conducting this search is to determine if there are any marks for which the examining attorney at the USPTO might raise a likelihood of confusion refusal. The quality of the searches depends on the attorney’s search skills, and almost any trademark attorney worth their salt will be conducting a basic search & clearance.
A preliminary search & clearance can help discover pending or registered trademarks that might be an obstacle to a brand owner’s registration. Solutions to this include arguments against the likelihood of confusion, disclaimers, consent/coexistence agreements, and crafty descriptions of the brand owner’s goods and services.
Will a Preliminary Search Cover Everything?
Simply put, no, it will not. The search will cover mostly word marks and will be limited in providing similar results when dealing with design marks (logos). To inquire about the registrability of design elements in a mark, it is best to consult your trademark attorney regarding a third-party “Comprehensive Search.”
A preliminary search & clearance is to uncover prior or current filings that might be considered identical or similar to the applicant’s mark. Therefore, the search could be more extensive in helping anticipate other types of rejections. These are rejections that a competent trademark attorney will advise you on during the development and management of your brand portfolio.
Why do I need a Comprehensive Trademark Search?
The difference between a comprehensive and preliminary search is similar to walking into a dark room with a candle or turning on the light bulb. The light bulb might not uncover even the darkest corners of the room, but at least it’ll give me a better idea of the layout.
A comprehensive search helps determine the registrability of design elements in marks. Beyond that, it can uncover most common law trademarks, state trademarks, and trademarks registered in foreign jurisdictions that might be obstacles to your brand’s registrability.
3 Types of Searches
To conduct a comprehensive search in the trademark database, usually three forms of searches are carried out which are discussed below:
Federal Trademark search
It is also called the USPTO database search in which the trademark register is examined for conflicting marks. The search engine determines this on multiple factors such as similarity with your mark’s name, spelling, pronunciation, presence of the term in foreign languages, and so on. By its very nature, the search is very complex and in-depth therefore it’s a time-consuming process.
State Trademark search
As the name implies, this provides search results from all over the fifty states in the U.S. This is usually an option for the brands that have a regional presence and do not need federal trademark registration. Although they don’t possess trademark rights at the federal level, they still constitute valid trademarks and can enforce their trademark rights.
Common Law Trademark Search
The common law searching is different from the one discussed above since this type of search doesn’t comb through the database or the register, rather it filters out the unregistered similar trademarks having prior usage from yours. Since the owners of those trademarks can claim rights based on the argument of ‘prior usage’ therefore such marks could become a problem for you in the registration process. For this reason, you must conduct a thorough common law search before the registration process.
Advantages of Trademark Searching:
The goal when searching, whether preliminary or comprehensive, is to get a layout of the brand marketplace and to determine the following:
- Is your brand protectable?
- Are there any obstacles to your application? If so, are there proactive measures a brand owner can take to increase their chances of registration?
- Are there any rebranding issues the brand owner needs to consider?
- Are there third parties who would proceed with TTAB opposition/cancellation proceedings?
- Is the brand at risk of trademark infringement and vulnerable to a federal lawsuit?
Conclusion
The advantages of understanding the risk exposures of a brand owner are plenty. Mainly, it helps avoid future financial waste in rebranding and litigation. But most of all, with an application process that is already lengthy, it helps prevent further delays in ensuring your brand is protected.
Have questions about trademark applications and need legal advice? I’m always here to help – don’t hesitate to reach out if you need guidance on anything related. You can contact me by scheduling a discovery call and we’ll be happy to answer all those questions that have been on your mind. During this call, we can discuss your needs in more detail and develop a tailored plan.
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Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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