Trademark Knockout Search: An Effective Tool for Companies Seeking New Brand Names
Whether you are an established business or a budding one, trademark (mark) knockout searches before filing for mark protection is a step that one must not forgo. This is because these searches not only ensure that your proposed mark is not in use by any other business but also save the time and costs associated with its prosecution.
The following article talks about trademark knockout searches and their relevance for companies seeking new brand names.
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What is Trademark Knockout Search?
A mark knockout search is defined as a search performed on a trademark database for identifying identical or highly similar marks before filing for protection. A conventional knockout search only takes a mark’s wording into account and not its graphics or designs. It also covers existing trademarks, expired marks, common law trademarks, and abandoned as well as pending mark applications. By performing these searches, businesses can evaluate the risk of rejection based on the likelihood of confusion.
How Knockout Searches Help in Choosing the Right Brand Names
Quite often companies come up with unique names for their new products or product lines and apply for trademark protection. However, if a similar or same brand name already exists in the market or with the trademark office, then the proposed mark is rejected. By performing an exhaustive knockout search, companies can check whether their proposed marks are already in use and thus save the time and costs associated with their prosecution. For instance, applicants planning to file mark applications with the U.S. Patent and Trademark Office (USPTO) can check the availability of their proposed brand names on the Trademark Electronic Search System (TESS).
Case Study – Sagacious IP’s Knockout Search Service for a U.S. based Law Firm
A prominent New York-based law firm (client) engaged Sagacious IP for carrying out knockout searches for three brand names/marks. For doing so, the client provided the necessary NICE classification and requested our team to check if their marks were eligible for protection. After an exhaustive search, our team found that the marks were extremely diluted, i.e., they had common names and sizeable results in the USPTO trademark search database. Consequently, we identified the results that were available in the same NICE class but were not matching with their goods & services. Based on Sagacious IP’s expert assistance, the client was able to register their marks with the patent office.
Points to Bear in Mind While Performing Knockout Searches
1. Conduct Exhaustive Searches – While performing a knockout search, it is important to check not only the trademark search databases such as TESS but also other important sources such as app stores, news sources, e-commerce platforms, social media channels, internet domain registries as well as regional, state, national, and international trademark registries.
2. Refine the Search Results – Filtering out the relevant search results is the most crucial and time-intensive aspect of knockout searches. Potential trademark applicants can get the desired results using manual analysis.
Conducting trademark knockout searches before registering for marks is a crucial first step for companies. While these searches can be performed in-house, it is advisable to get professional assistance to avoid missing out on any relevant mark or mark application.
If you are a business that is looking for comprehensive mark searches, Sagacious IP has got you covered. Our Trademark Search service is designed to provide useful insights to clients before they file for marks. Product-focused companies also perform these searches before launching their products in new markets. Click here to know more about this service and click here to know more on how to perform a successful trademark knockout search.
- Aditi Yadav (Trademark) and the Editorial Team