Anyone using a trademark should conduct a trademark search. A trademark is a word, phrase, symbol, design, or sound that identifies a brand. A trademark legally differentiates the product or service from all others.
It is important to conduct a trademark clearance search to determine if a trademark is currently being used by another. This due diligence can indicate the probability of a trademark application being approved and also the likelihood of an infringement lawsuit. A trademark clearance search can reveal if there are other similar marks registered with the United States Patent and Trademark Office (USPTO). The USPTO will issue a refusal or denial if that happens and your application fee will not be refunded. The search can also reveal if there are common law trademarks similar to your desired mark. The owner of a common law trademark could still sue you for infringement. Lawsuit fees can easily cost $20,000 or more. This can all be avoided with a trademark search.
An attorney conducts a trademark search to determine if the desired mark is too similar to another mark. As discussed, two marks do not need to be the exact same for the USPTO to deny the mark, or for someone to sue you for infringing on their brand. The attorney determines whether the marks: (a) look or sound the same, and (b) are related products or services. Thus, you cannot use a mark that someone else is using, or is too similar, in the same field/category. You can, however, use the same or similar mark in a different field/category. For example, Delta Airlines and Delta Faucets are the same name but the marks are in different international classes. Everything that can be sold (both tangible and intangible) is assigned an International Class (IC) number by the USPTO. Different products and services can fall under different classes.
A Google search is not enough. An experienced attorney searches for similar marks on the USPTO’s TESS database, state business listings, internet searches, and other common law searches. Searches can be done on an international scale or by territory.
MDGR LAW conducts a thorough search and then prepares an Opinion Letter for clients to review. The Opinion Letter includes both a summary risk assessment and a detailed report of the search results. Anyone applying for a trademark registration should complete a trademark search.
Melissa D. Goolsarran Ramnauth, Esq.
Trial-Winning Trademark & Business Law Firm
Book an appointment online at www.mdgrlaw.com/contact