Setting The Right Objective For Trademark Search
Trademark is a crucial marketing tool to position your brand uniquely as it serves as a unique marker of identity. Hence, organizations are willing to spend considerable amount of time, money, and resources to finalize a trademark for registration. However, do you know that your finalized trademark for registration might not be legally available? Therefore, it is advisable to conduct a trademark search to ensure the correct selection of trademark and its availability.
This article will discuss the objective behind trademark search, its advantages, search report, and how to conduct a trademark search.
Different Objectives for Trademark Search
Trademark search provides a quick and straightforward way to explore the global availability of your chosen brand name in your domain of business. Most of the industry experts recommend the search activity before the use of a new trademark. However, if the search is not performed, the original owner of the trademark can force the mark to be discontinued. The damage could be even more if the trademark owner enforces his right after the introduction of your company’s product.
Before conducting any trademark search, it is vital to know the objectives for your search. There are essentially two objectives:
- To check whether using a trademark will be infringing upon anyone else’s rights
- To check whether a trademark can be registered once you file an application
Let us understand these objectives in details:
1. Infringement Searching
Applicants need to search official trademark registers for both current and pending trademark registrations to avoid infringing on anyone else’s rights. Moreover, they should also conduct market-based common law searches for competitors using similar but unregistered trademarks.
A precise infringement search results mean that the probability of using a competitor’s similar mark is rare. A clear result is also great news from a legal perspective, as you won’t be exposed to a potential lawsuit in the future.
2. Registrability Search
To check whether your trademark is registrable, you must search for deceptively similar or substantially identical trademarks in existence. For this reason, you must make similar inquiries as required for infringement search. Besides, you need to identify if your trademark contains:
- Geographical name
- Illegal/inappropriate meaning or connotations
- Deceptive or confusing elements
- Known meaning related to quality, kind, quantity, value or intended purpose of the goods or services.
After understanding the different objectives for trademark searching, it is crucial to know the trademark registration process.
Process of Trademark Registration
In most cases, trademark searching is a vital first step in trademark registration or a brand launch strategy. The ‘searching’ activity ensures no infringement of any third-party trademark rights. Once the searching activity generates a positive result for the selected words or terms, filing for trademark registration can be initiated. The process of trademark registration is shown in Figure 1.
1. File Trademark Registration: The trademark application can be filed either online or on paper. Applicants can submit the duly filled application either online or in writing to the trademark office. The application contains the trademark for which the protection is sought. The form also contains the class of products/services covered by the trademark and other required documents as per the filing.
2. Official Search Report & Examination: The examiner examines the application at the trademark office and moves forward to the next step if he is convinced on the following grounds:
- The trademark is not confusingly identical or similar to a previous trademark that covers a similar product or service.
- The trademark does not simply elaborate on the product or service it covers.
If the examiner feels unsure about the above conditions, he issues an examination report with objection.
3. Response to Examination: Applicants should address the objection with persuasive written arguments to assure the examiner. However, if the examiner still has some doubts, he may list the application for a hearing. Afterward, a trademark attorney can appear before the hearing officer to state the reasons for permitting trademark registration in question. Applicants should submit a response to examination only when the concerned authority demands it.
4. Acceptance and Publication: Once the trademark examiner is convinced about the examined trademark, it is published on the trademark website for four months.
5. Opposition Period: In the four months, any third party can oppose the trademark registration. It does not have to be the registered proprietor of any mark. Even a customer, purchaser, or public member can object. The underlying logic is that the opposing person represents the public at large. Two similar marks in the market can confuse the public and members of the trade. However, such cases are sporadic in everyday scenarios. If there is an opposition, the applicant has to overcome it before the trademark is registered.
6. Registration: Once the trademark has been advertised for four months and upon its expiry, the trademark is registered. The applicant is issued the trademark registration certificate online. Usually, the registration is valid for ten years after which it can be renewed again.
Once you are familiar with the trademark registration process, the next step is to search for a free trademark name.
How to Search for Free Trademark Name
The use of search engine tools effectively filters out the same or similar mark, already in use by any third party. Moreover, it can offer the details of the related product or activities. However, search engine tools have some limitations. For example, it fails to identify registered trademarks but is yet to be launched in the market. The solution to the limitations of search engine tools is to conduct detailed trademark availability search in official or task-specific databases. The trademark search usually falls into one of the following categories:
1. Identical trademark search: It identifies marks that are phonetically or visually an exact match.
2. Similar trademark search: This type of search identifies identical or confusingly similar marks.
3. Trademark search with opinion (‘search with advice’): It generally includes an attorney’s recommendation for the results of the identical or similar trademark search based on consideration of identified prior mark.
4. Index search: This type of search identifies companies with similar/identical names to the search terms.
5. In-use verification search: It checks if the third party with prior rights is using its trademark rights correctly, which may provide grounds for challenging a registration.
6. Trade name search: This type of search identifies trade name rights that may conflict with desired trademark, by filtering companies with similar/identical names to the search terms. Besides, a trademark attorney can also check a chosen mark for unintended meanings and associations. This search is of particular significance should a company launch its product or brand in foreign countries where linguistic differences could charge you out.
Knowing how to search for a free trademark name is insufficient; you must also know how to comprehend the search report and its results.
A search report for a trademark is a comprehensive report that contains search results. It is beneficial for businesses looking to register their trademark before submitting an application and who wish to know all about the trademark availability, similar marks, and other details. These reports are generally collected by specialised recruitment firms and can also be requested by trademark attorneys.
Applicants can start by searching online with a reasonably reliable mark. Next, try to check services or goods provided in your specific industry. This activity is normally performed online. The search for the trademark easily takes two full days.
It is also recommended that an experienced trademark attorney request a formal opinion before applying for registration or engaging in the trade, advertisement, or manufacturing. The attorney can review the mark and conduct a detailed check on the trademark database about the availability and registration of the proposed mark. The Search Report for a trademark lawyer would constitute the groups in which the proposed mark is to be submitted, with maximum security based on the goods/services being located in the native country and the activity of the company in these transactions. Besides, he will also draft an appropriate definition of the class trademark for filing.
The attorney’s report is a holistic report that makes it possible for the decision-maker to predict the possibility of the trademark registration from the point of absolute grounds for refusal and the relative grounds for refusing. It also emphasizes the risk of objection from third parties or further proceedings.
Focusing on the scope of the trademark search is equally vital after understanding the significance of the search report and its results.
Scope of Trademark Search
The extent of a trademark search has to be detailed enough to encompass references to federal trademark registrations, state trademark registrations, and common law trademark rights. The federal and state searches should include abandoned applications, pending applications, and expired registrations. The reason for such a holistic search is that trademark rights in many countries are granted on use and registration is not required for the rights to exist in the trademark. Therefore, although abandoned registrations and pending applications specify no federal rights to those marks, the marks of these applications could still be in use and very much relevant.
It is also crucial to discover common law trademarks even where no applications have been filed for registering the marks. Many databases created contain lists of product names, although they are not complete. Additional data sources must be examined, such as periodicals that cover the area in which the trademark will be used, internet domain name registrations, press releases, phone book databases, and corporate information databases. Trademark searches without a relatively comprehensive common law trademark search are of little worth when utilizing a new trademark.
Now that we understand the scope of trademark search, we will shift our focus towards the benefits of trademark search in the next section.
Benefits of Trademark Search
The benefits of trademark search are shown in Figure 2.
1. Saves Money and Resources: The first benefit of a trademark search is to save money and resources against a mark that might not be available. The activities of moving forward with the registration of a trademark (in the absence of any search mechanism) will prove counterproductive with the wastage of financial and human resources.
2. Saves Time & Provides Flexibility: A comprehensive trademark search identifies the similar or exact mark already in existence, thus cutting out the possibility of a claim in the future by any third party. Therefore, a lot of time is saved without wasting on an already registered trademark. Applicants also get a lot of flexibility in searching before the actual product is launched in the market.
3. Avoid Business Hiccups: In the absence of trademark searching, businesses can go forward with the trademark usage and application filing. The branding activity associated with the trademark is also initiated. However, all the hard work is spoilt once the trademark is flagged for infringement or dilution. Consequently, a business will be forced to rebrand causing a major hiccup in the process. This can be avoided by performing an effective trademark search.
4. Avoid Dispute & Litigation Cost: Using an existing trademark can result in dispute and increase litigation cost if the trademark owner decides to enforce its right. Performing a trademark search to check the availability of a trademark saves you from complicated disputes and litigation costs.
5. Get Valuable Insights: While conducting a trademark search, you also learn about the trademarks that the competitors are using in your specific industry. After getting valuable insights, you can change your selection according to market trends.
In conclusion, trademark search helps save time, money, and resources and provides the flexibility of altering the trademark at the right time. It is a significant investment, and it is prudent to know your objectives clearly before proceeding. Although trademark search can be performed on your own, it is prudent to hire the services of a reliable third party.
Sagacious IP is a leading value-driven and technology-focused IP research firm that provides reliable support services to the global IP community. Its presence across three continents offers service to Fortune 500 companies, law firms, start-ups and R&D organizations. In addition, through our Trademark Search service, we help clients to identify the existing and available trademark for registration. Click here to know more about this service.
-Gopal Singh Rawat (Trademark) and the Editorial Team