Do I need a trademark search?


Trademark searches are useful in several different ways. They provide information about the likelihood that the proposed mark would succeed in an application for registration. They also give more complete results for assessing whether the mark is an infringement risk. From a branding perspective, search results inform the applicant about other uses of the mark and provide the applicant with an indication of how strong the proposed mark would be. This is also useful information for trademark enforcement, because it will allow the mark holder to make an informed judgment about the scope of its rights.

One of the principal purposes of a trademark search is to determine whether an application for registration would be successful. Trademark searches are useful in this regard because they provide comprehensive search results to review. From these results, the attorney may advise the applicant about the potential issues the mark would face, if any. In some cases, the search results may not include any problematic references, indicating that the mark is likely to succeed. In other cases, the opposite may be true. In a third possibility, the search may reveal marks that are potential problems. This information is valuable to the applicant because it allows them to craft a strategy for overcoming the references prior to applying for the mark.

Another important feature of a trademark search is that it provides results that go beyond the Federal Register of Trademarks. If the applicant applied for the mark without a search, the application process would include an examination of the mark to ensure that the mark did not conflict with another federally-registered mark. But this search would not cover other bases for protection, such as state registers and common law uses. A full trademark search gives the applicant a better picture of the mark’s infringement risk because it includes all bases for protection.

Search results are also useful for determining the uniqueness and strength of a proposed trademark. A high number of similar marks indicates that the market is crowded with certain words or phrases. This implies that the user’s protection for the proposed mark may be narrow, and that similar but not identical marks for the same goods/services are permissible. By contrast, marks made of less common components can expect stronger protection vis-à-vis subsequent similar marks.

The relative strength of the mark is essential information when making decisions about how to enforce the mark because it informs the trademark holder about how broadly they may assert their rights. For this reason, a trademark search provides utility even after the trademark is secure. It gives the trademark user a frame of reference for determining how far its rights extend.

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