Importance of Performing a Trademark Search
A federal trademark search is the critical legal step in the process of selecting a trademark. An individual or business must first determine whether a trademark is available for use by conducting a trademark search generally before or at the beginning of a new trademark’s use. In other words, it is very important to engage a trademark attorney to perform a trademark search before using the trademark or proposed trademark in commerce. This reduces the possibility of inadvertently infringing on a trademark belonging to another business, entrepreneur or professional.
Launching a new product, service, or business without first conducting a trademark search is flirting with disaster. A trademark search is an investigation to discover potential conflicts between a proposed trademark and an existing one. A trademark search is necessary because trademark rights under US trademark law are granted on a first come, first served basis – i.e, first in time, first in right. A business or individual entrepreneur obtains certain trademark rights by being the first in a given market either to use the trademark or to file for (and successfully obtain) trademark registration. Once the business or individual entrepreneur obtains such trademark rights, it is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion.
Thus, any Illinois start-up business or entrepreneur contemplating adopting a new trademark faces the risk of another business or someone else having already obtained trademark rights to a similar market in the same trademark industry classification. A trademark search is the primary means of assessing that risk. Although a trademark search is not 100% foolproof, it is definitely a worthwhile investment.
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Determining the Availability of a Trademark
First and foremost, an individual or business must determine if the proposed trademark is actually available for federal trademark registration or if someone has already registered a similar or identical trademark. Failing to perform a trademark search to determine if a proposed trademark is available, could result in a waste of money and exposure to an unnecessary trademark infringement lawsuit.
The standard that is used to determine if a potential trademark is available for federal trademark registration is whether the proposed trademark is likely to cause confusion with an already registered trademark. If there is a likelihood of confusion, then the proposed trademark should not be used as a trademark infringement action could arise from such use.
Normally, if the proposed trademark is distinctive, then the trademark would be afforded federal registration. However, there are occasions that a trademark search will uncover that one or more of the terms contained within the proposed trademark would be considered either descriptive or generic. This could ultimately effect the registrability and protectibility of the proposed trademark. A finding of a descriptive trademark would mean that in order for the proposed trademark to be eligible for federal registration, the trademark must attain a secondary meaning. If the proposed trademark is found to be generic, then the trademark is not registrable, even if a secondary meaning is attained.
If it is determined that a trademark is not descriptive or generic and potentially eligible for federal trademark registration, a trademark search is still important to determine whether the proposed trademark is registrable. Reasons why the proposed trademark may not be registrable, even though the trademark is not descriptive or generic, could include existing registered or pending trademarks in the USPTO database that are identical or confusingly similar.
Preventing a Trademark Infringement Lawsuit
Clients often wonder if adopting a certain trademark will lead to a trademark infringement lawsuit. Conducting and completing a trademark search will answer this question by yielding a list of results showing trademark registrations, abandoned trademarks, and cancelled trademarks as well as other pending trademark applications. From this list, our trademark attorneys can spot any potentially relevant trademarks that would affect a client’s proposed trademark or trademark application or expose them to a trademark infringement lawsuit. Our trademark attorneys can then make a determination regarding the likelihood that a law suit would arise from the use of the trademark.