Archives For common law search

The Benefits of Using an Attorney to Conduct a Trademark Search

February 3, 2015 — 5 Comments

Conducting a good trademark search prior to filing an application is a critical first step that many businesspersons overlook. In a previous post (How to Perform a Trademark Search) we walked readers through various sources they may want to search including common law sources, business name databases, and the USPTO records.

While you can do it on your own, there are a number of advantages to seeking the help of a trademark attorney. In this post we will explore some of those benefits.

Common Law Searches Reveal A Lot of Marks

While the USPTO maintains a very large database of registered trademarks, those are not the only ones you should research. This is because trademark rights stem from first use in commerce, not registration. As a result, you should always conduct a common law trademark search to see what marks are being used in commerce already.

A trademark attorney will know where and how to conduct this kind of a search. You should be looking online, in newspapers, magazines, and other sources. Additionally, a trademark lawyer is uniquely qualified to examine each potential mark to see who uses it, where they use it, when they first started using it, and whether their use is in connection to any similar goods or services you seek to provide. They can then weigh in on whether you have good rights or not.

Business Name Records Can Be Misleading

A trademark attorney can also search state business name records. Sometimes a registration for a business name or fictitious name can cause conflict and may prevent you from having strong rights. However, an experienced trademark attorney can look at additional details regarding these files to see if the name is still in use, if it has been terminated, as well as whether the use constitutes use in interstate commerce.

USPTO Records Are Complex

Lastly, a trademark lawyer can perform an exhaustive search of the USPTO database. Most basic searches will reveal many results and an attorney can help to narrow your search to look for marks that might be confusingly similar and in the same international class as your mark. Her or she can also use judgment in deciding what other searches must be ran, such as design code searches and searches for similar or misspelled words.

Then What?

After conducting these thorough searches your trademark attorney can advise you on the odds of obtaining a registration. While it is often difficult to put odds in writing, a trademark lawyer can offer good guidance on when you should not file an application due to a likely denial.

That can save you a ton of money!

If you want help searching for existing marks or filing a trademark application with the USPTO, be sure to check out MightyMarks.com. Our online platform, coupled with years of trademark experience, make us uniquely qualified to help businesses protect their trademarks.

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Image: Thinkstock/Woodkern
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , ,
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How to Perform a Trademark Search

May 28, 2014 — 13 Comments

The best way to perform a trademark search is to use an attorney experienced in trademark law or the services of a search firm. Of course, prior to paying for a professional search, it is advisable to perform a preliminary “knockout” search on your own. Here’s how to get started.

Common Law

First, search “common law” sources such as online search engines, social media, domain names, trade publications, relevant magazines, news websites, phone books, and similar sources. You should search your mark and also similar marks. For example, if your mark is “Two Step Bar and Grill” you should also search for “Too Step/s,” “2 Step/s,” etc. There are thousands of places like this you could search and a professional can provide immense value when searching common law records because they have access to large databases of common law sources.

Business Names

Second, you may want to run state searches. While not nearly as vital as a federal trademark registration, the state trademark databases can be helpful, particularly in the home state of the client. Specifically, each state will have official business name records and many also have their own state level trademark registration databases and also fictitious name registrations. Those sources will usually be found through the Secretary of State’s website. And if you plan to expand to more than one state, then search those additional states also.

The USPTO Database

Lastly, and most importantly, be sure to search the USPTO database. But be forewarned, searching USPTO records can be a daunting task. Many clients think it’s a simple task… it is anything but simple. For example, a basic search for “Delta” reveals almost 2,500 results. But with a few quick tips, we can make it easier to perform this search. Trademark professionals often use sophisticated software to search the USPTO database and compile search reports. For a quick examination on the USPTO database first click on “Trademark Search” on the USPTO Trademark Website.

Once there, you have several options. You can run a “structured” search to find narrow results or a “basic” search to find broader results. To keep things simple, let’s go with a basic search. You can make a few selections on this page. You should usually search for “Plural and Singular” rather than just “Singular” and you might consider searching just “Live” marks. A “Live” mark is a registered mark or a mark currently in the application process. A “Dead” mark is a mark that was refused registration or a mark that was once registered but at some point lost the registration. (extra tip: you shouldn’t ignore dead marks altogether because they can revel interesting facts about prior users, litigation, and sometimes current users that simply lost a registration)

After you’ve run your search you will likely find a list of marks. You should examine the potentially similar marks to see if they are associated with any goods or services similar to your goods and services. If they are, you might have trouble registering your mark. But remember our prior lesson about how similar marks can be registered if they are applied to different goods and services.

You can spend hours in the USPTO database. When you get stuck, contact an expert. And feel free to call on Mighty Marks® if you want assistance with your search.

Image: Thinkstock/triloks

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , ,
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