by Traverse Legal, reviewed by Enrico Schaefer - August 14, 2008 - f. Trademark Availability & Monitoring
This post will examine a basic trademark availability search. If you have a more complex trademark issue, or are investing significant funds in your trademark, you should search additional databases beyond those described herein.
Q. What is a tradmeark availability search?
A.
In General, trademark availability is a search done by a qualified
trademark attorney or staff member under that attorney’s direction to
identify other possible uses of the market of your proposed trademark,
or words which may create customer confusion as related to your
proposed trademark in your proposed industry.
Q. Do I have to get a trademark availability search before registering a trademark?
A.
The answer is No, however you will be taking a significant risk that
you will either not achieve registration or even if you do achieve
registration, that your trademark will later be determined to be
invalid or infringing on someone else’ mark.
Q. I already did a Google search and checked the trademark database, isn’t this enough?
A.
It depends. most clients do not understand trademark law well enough to
come up with a different variations of your proposed mark in order to
do a comprehensive search. A search typically involves variations of
your proposed trademark or service mark, phonetic variations and other
advanced search techniques within the trademark database.
Q.
When I searched Google and/or the trademark database, I found an exact
use of my proposed trademark term. Can I still register the mark?
A.
This is where a qualified trademark attorney can provide real value.
There is a “Delta Airlines” and a “Delta Faucet.” Both have registered
trademarks in different industries. Trademark availability depends on
more than just the literal use of the word. Product and service
descriptions as well as international class (IC) categorizations are
often important in determining whether multiple uses of a word would
preclude registration.
Q. How much does a trademark availability search cost?
A.
A basic trademark availability search costs $500.00 and includes a
Google search and rudimentary search of the trademark database. If your
company’s investment in this trademark is going to be minimal, or you
have limited funds available to clear availability and register your
mark, this basic $500.00 search may be appropriate. However, as your
company’s investment in the trademark increases and funds become less
of an issue, a trademark availability search can scale up to thousands
of dollars. For instance, if your company is going to invest over
$100,000.00 in marketing in order to create and develop the brand,
spending more in order to ensure availability is a smart business
decision.
Q. What are the variables for a trademark availability search?
A.
There numerous ways to determine whether or not someone else may
already be using your proposed mark related to a similar set of goods
and/or services. At the basic level, the USPTO Database
and a Google search provide a good starting point. However, this basic
$500.00 search does not include an analysis of state databases for
business filings, foreign databases in terms of company names and
registered marks and a variety of other different databases which are
available. If your proposed mark is going to be used globally, or in
countries outside the United States, paying for a trademark
availability search which examines databases outside the United States
can be important. Even if your trademark is being used primarily in the
United States, paying for a check of state databases can also reduce
your risk of problems later. Recall that not all companies register
their marks (in fact only a small percentage do) and not every company
advertises on the internet. A U.S. STATE trademark availability search can reduce risk of conflicting marks later.
Q. What are the deliverables for a trademark availability search by Traverse Legal?
A.
We provide an analysis of the databases you have selected for us to
search and an opinion as to registerability of your proposed mark
compared with the results of the databases researched. The results can
never guarantee that there will not be problems but we’ll provide you a
risk assessment so that you can make a business decision as to whether
to proceed forward with the mark. One risk factor which is always in
play includes any limitation the client places on the databases
searched. What we do not look for, we certainly cannot find.
Q. If my trademark availability turns up potential problems, can I still register my mark?
A.
Yes. This is a business decision which you will have to make based on
our findings. Sometimes, trademarks will be filed as “intent to use”
marks but ultimately are abandoned. Other companies have registered
trademarks but are no longer doing business as those marks. Other
companies have provided false information to the trademark office
concerning their trademarks and thus are subject to a petition to
cancel at a later date. Other companies simply don’t monitor or protect
their marks and thus would be unlikely to send a threat letter to you
later on. Regardless, our attorneys will put you in a position to make
an informed decision concerning these risks.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
