We’ve been discussing common mistakes small businesses and entrepreneurs make when dealing with their brand, mark or image.
Last week we discussed that one common mistake is that people fail to properly conduct a trademark search. Trademark searches can either be preliminary trademark searches or they can be full trademark searches. Today we’ll discuss preliminary trademark searches.
PRELIMINARY TRADEMARK SEARCHES
Preliminary trademark searches generally involve searches conducted for free on the internet and the U.S. Patent and Trademark Office (USPTO) database (using the Trademark Electronic Search System (TESS)) to see if there are any direct conflicts. If one of these searches identifies a direct conflict, it either means that the potential mark is either unavailable or will only become available if additional acts are taken to obtain clearance (e.g. purchasing conflicting rights). Depending on time and budget constraints, taking such clearance actions may not be a realistic option–especially for a small company or entrepreneur.
A USPTO search will typically pull up existing federal applications or registrations for marks that are identical to or applicable to products or services which are closely related or identical.
While USPTO searches are useful as a preliminary search, they are not good enough to completely clear a proposed mark for full registration.
Limitations on USPTO searches are:
1) The USPTO database only includes federal trademark applications and registrations.
2) The USPTO database does not include common law marks.
3) A USPTO search may not reveal applications or registrations for marks that may be similar enough to cause consumer confusion although they are not identical, nor do they appear to have a direct conflict.
Thus, if you have a brand, mark or image you would like to protect by obtaining a trademark, it is probably not a good idea to rely solely on a USPTO or general internet search unless:
1) You intend to use your mark in a limited manner for a short period of time or
2) Your mark is so descriptive and distinct that it would be extremely unlikely for a third-party to have conflicting rights that would be enforceable.
If you are interested in learning more about how you can protect your brand, please consult a trademark attorney.