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THE TRADEMARK SEARCHING PROCESS

It is always a good idea to conduct a search for at least federal applications and registrations prior to adopting and using a trademark. For one thing, if you file an application for a mark and there is a prior pending application or registration, the PTO may refuse to register your application and you would end up losing all of the fees you have invested in the applicaton.

Aside from that, each state has its own trademark registration system independent of the federal system. Further, there are millions of businesses that never register their marks at all. While the PTO will not search or cite state or unregistered marks against your application, the existence of these marks could pose a problem with your RIGHT TO USE your mark in geographic areas where these prior users have established a market. IT WILL NOT MATTER WHETHER YOU ULTIMATELY RECEIVE A FEDERAL TRADEMARK REGISTRATION. Prior users cannot be stopped from using the mark in areas where they have established themselves prior to the filing of your federal trademark application although federal registration could keep them from expanding their use of the mark beyond that area. What's more, such users could keep you out of their established geographic market even if you obtain a federal registration. If their market area is large, such as 27 states, then your federal registration will be significantly limited in value.

TYPES OF SEARCHES AND
STANDARDS APPLIED

There are numerous websites that allow you to conduct your own searches either for free or for a nominal fee. Even the PTO website has a search feature. However, in many cases, they will simply provide you raw data or results, but they will not help you interpret the results. Unless the results are analyzed by an experienced trademark attorney, you could miss a critical problem.

Another common misbelief is that as long as the marks are not identical, then there is no problem. Many people confuse a trademark search with that of a search for corporate or business name filings with a state office which registers such names. In most cases with corporate or business entity name registrations with a state, the standard applied is generally an exact identity standard. That is, any minor difference in spelling will be allowed. THAT STANDARD DOES NOT APPLY TO TRADEMARKS.

Marks can be confusingly similar if they sound alike, i.e., EXXON vs. X-ON, or if the designs or marks look highly similar, or if the marks simply have similar meanings or commercial impressions even though the marks are spelled and sound differently. Examples of real cases include CYCLONE and TORNADO for fences; TUNA O' THE FARM for canned chicken and CHICKEN OF THE SEA for canned tuna; PROMISE for furniture polish and PLEDGE for furniture polish.

Neither do the goods or services of the parties have to be identical in order for marks to be refused registration by the PTO or found to be infringing by a court. The goods and services only need to be of the type commonly expected by consumers to originate from a common source or sold through the same or similar retail or wholesale channels of trade. The more closely related the goods and services of the parties are, the less similar the marks have to be in order for there to be a problem.

For example, a brand name for a line of clothing could be confusingly similar to a retail clothing store; the name of a food product could be confusingly similar to a restaurant; or the mark for a watch could be confusingly similar to a mark for a handbag.

WHAT WE OFFER

We can order, review and analyze full availability searches usually in about a week. These are the best kind of searches to run because they reveal not only federal trademark applications and registrations, but also registrations with every state trademark office as well as unregistered common law marks to a reasonably certain extent. These searches will also include Internet domain name registrations. A full availability search can be ordered on an expedited basis, however, the costs we pay to the search company who compiles the data, as well as our fees for analyzing the data, are more expensive.

We can also perform preliminary searches and analyze federal and/or state registrations on a more expedited basis and for a lower cost. Such searches could be used to determine whether it is worth pursuing a full availability search. If you decide to take a chance and file an application based on a preliminary search, BE AWARE THAT IT WILL NOT FIND UNREGISTERED COMMON LAW MARKS AND SUCH MARKS COULD INTERFERE WITH YOUR RIGHT TO USE YOUR MARK.

We believe that doing some type of search, preferably a full availability search, prior to becoming so "married" to a trademark is so important that we are offering discounts off of our fees (excluding the PTO filing fees) for preparing and filing a federal trademark application. If you need more convincing about how spending a little money now can save a lot in the long run read the e-mail message below that we received from Dick Nash, President & CEO of Crowd Creators, Inc. of Dallas, Texas.

Thank You Jeff Look, TrademarkGuru!

Thank you for assisting me to understand the value of a Full Availability Trademark Search before I submitted an application for a trademark. It was really tempting to go with one of your competitors who offer a "full search" (of what? - the U.S. Patent Office website - www.uspto.gov - that is accessible to all for free?) for less money. It was also very tempting to do my own search or just skip the search phase and file a trademark application. Instead, I valued the fact that you are a Trademark Attorney with 5 years experience as a Trademark Examiner - who has actually worked in the U.S. Patent Office (which even prints a disclaimer on their trademark search web page warning one not to rely upon the results of a search done exclusively at their site).

Jeff, I am so glad I took your advice and spent the few dollars it takes to "do it right". Your guidance saved me thousands - if not millions - of dollars!

Last Thursday, (July 18, 2002) you sent me the news that no one who has ever endeavored to trademark anything ever wants to hear. You sent me the results of your Full Availability Trademark Search which indicated that the trademark around which I had designed my whole product offering had already been registered by a direct competitor back in 1985. I am so grateful that you sent me the news that I did really did not want to hear.

Sure, we could have just submitted an application for the trademark I thought I wanted. The results of such action could have been catastrophic! For after a year or so of production and distribution of my product, the Patent Office would have sent me notice that they had denied my trademark and possibly even my patent applications. Worse yet, the direct competitor who owned the rights to the Trademark could have sent me notice that they were suing me for an amount far in excess of my total sales because I had been selling and distributing my product using their trademark. This could have cost me literally thousands - if not millions of dollars.

Jeff, if people are hesitant to pony up the money it takes to do a Full Availability Patent Search suggest that they contact me personally. I will tell them why it is better to get the news no trademark applicant wants to hear early in the game, than to find out that years of effort have been destroyed by being reluctant to spend enough money to properly protect their intellectual property.

You Have Transformed Me Into An Ardent Fan Of The TrademarkGuru!

Dick Nash,
President & CEO
Crowd Creators, Inc.
Dallas, Texas
469-222-6657

The Look Law Firm
Phone: (469) 371-3082
Fax: (870) 355-4812
guru@trademarkguru.biz

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