Trademark Law Basics, Part 2: Why Conduct A Trademark Search?

This is part two of the CDAS Trademark Law Basics series. If you missed the previous installment, it is available here: Part 1, Why Register a Trademark?

Many small businesses apply to register without advice from an attorney. This is perfectly legal, but can be more costly than you think: the fees and costs associated with filing a PTO application can be wasted if your application is denied, opposed, or later challenged in court because of easily avoidable mistakes. With a little time and money up front, you can get off on the right foot. Before you decide to file, a trademark attorney reviewing a trademark search can assess whether your preferred mark appears likely to be available and to go unchallenged. Remember, if you can’t register the mark because someone else already has a registration for a similar mark (or for any other of the many reasons why a trademark might be rejected), you do not get your filing fee back!

A preliminary, or “knockout,” search surveys PTO trademark registrations and public records for identical (exact match) marks. This kind of preliminary search can be performed by the applicant or by one of many low-cost search providers (such as Trademarkia or LegalZoom), and many small business owners elect to stop there. But because there remains a substantial risk of denial, opposition or cancellation if your mark is too similar to an existing mark in the same or even a “related” class of goods or services, there is a substantial risk that an application may fail after only a direct search. (For example, the PTO will look for marks that are “confusingly similar,” not just identical, and it will also look for similarities in not just “sight,” but “sound” and “meaning,” too.) “Low-cost” could end up meaning substantial cost in the long run. Not only could an applicant have to go back to the drawing board, but we are very familiar with applicants who end up having to respond to a cease-and-desist letter because a competitor with a similar mark is watching the PTO’s incoming filings.

Nevertheless, to limit your initial expense, your trademark attorney should conduct this search for you at a minimal cost before taking any further action.

A full search is conducted with the advice and assistance of a trademark attorney, who will also retain the services of an industry-leading search vendor such as CT Corsearch or Thomson Compumark (often at a discount, which can be passed on to you). While no clearance is perfect, a full search provides the best possible information about your ability to register a trademark. Your attorney will develop search parameters around your mark and class(es) of goods or services and will order and review the search. The search provider will examine the PTO registry, state records, internet domain registries and a variety of other public records and will identify any marks that might cause a risk of conflict. Once the search results are received by your attorney, records of concern will be investigated, and an analysis of the search and risk assessment can be provided to you.

If you decide to file, your attorney will help you to create a filing strategy. Together, you will draft a description of your goods and/or services, determine the date from which you are entitled to claim actual use, and collect the necessary specimens (examples) of the mark for filing. Naturally, your trademark attorney will handle the nuts and bolts of the application process, and will receive and docket the PTO’s notice of publication or other response.

Costs associated with filing (including a full search) will generally run between $2,000-$4,000 and a predetermined flat rate, including PTO fees and legal fees. If a trademark covers more than one class of goods and/or services, one application can cover multiple classes, but the applicant must pay additional class fees. To maintain your trademark registration, renewal filings are required after five years of registration and then every 10 years thereafter. Detailed information about the government fees is available at the PTO website’s fee page, and we can provide that information along with an estimate for legal fees upon request for your particular situation.

If you have any questions about this article, please contact an attorney in the CDAS Trademark and Brands Practice Group.

Materials on CDAS.com are provided for informational purposes only, do not constitute legal advice, do not necessarily reflect the opinions of CDAS or any of its lawyers or clients, and are not guaranteed to be complete, correct, or up-to-date. CDAS.com is not intended to create an attorney-client relationship between you and CDAS.