The Importance of Trademark Searching
June 27, 2011 No Comments
One of the most common mistakes a business makes regarding its intellectual property is failing to conduct a comprehensive trademark search before opening its doors or offering new products or services. That mistake can be costly if the mark chosen by the business is similar to one that is already being used by a related business, potentially resulting in significant rebranding and litigation expenses.
The failure to conduct a trademark search is such a common mistake likely because there are a number of myths that cause businesses to believe a search is unnecessary. For business names, a very prevalent myth is that there is no need to search if the Secretary of State’s office approves the name of a corporation or limited liability company. The Secretary of State’s name approval process uses criteria different from trademark law and only checks against corporate and limited liability names registered with the state. It does not does not consider federally registered marks, partnerships, sole proprietorships, business entities in other states, or even state trademark registrations. Accordingly, trademark conflicts can arise between businesses in the same state that have both had their names approved by the Secretary of State.
A second myth is that it is sufficient if no identical matches are found after searching a mark on the Internet or United States Patent and Trademark Office (“USPTO”) records. Trademarks need not be identical for a conflict to arise, phonetic similarity or similar meanings are sufficient. These searches are also incomplete because trademark rights are acquired through use not registration and many businesses do not advertise on the Internet. Thus, these searches may miss potential conflicts.
Even established businesses should conduct searches for any trademarks they use that have not been registered with the USPTO. As we discussed in a prior post, federal trademark registrations confer a nationwide right of use and conflicts with unregistered marks may arise many years after they began to be used. Both established and new businesses should consult with an experienced trademark attorney to determine an appropriate search strategy and to properly understand the search results.
The need to conduct trademark searches are only one of many intellectual property issues that businesses face. For other common issues, please review our intellectual property checklist.