If you’ve talked to anyone about protecting your brand or about your trademark portfolio, they have probably mentioned getting a preliminary trademark search or a comprehensive trademark search. These are also called trademark clearance searches. One type is inexpensive, the other quite expensive. But what’s the difference between the two?
Why Do a Trademark Availability Search At All?
A trademark search is also called a trademark availability search, a clearance search, or a trademark clearance.
You could skip doing a trademark search altogether. Many people do. But it’s a very risky approach. In the U.S., trademark rights are established by using the mark. That means that someone could have rights in a trademark that is similar or identical to the one you want to use, even if they have never registered that trademark. I’ve seen this sink companies.
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The danger is that you could start using a trademark, or pay to apply for registration of a trademark, only to discover after spending a lot of money that your trademark conflicts with someone else’s trademark. How is a conflict like that resolved? If someone else used their trademark before you, normally you would have to change yours and wouldn’t be able to get a registration for yours.
Most businesses don’t want to have to change their trademark after investing in branding, advertising, product packaging, and so forth. By conducting a trademark search, you invest a little money to protect your larger investment in branding once you know the trademark you want to use is actually available.
What is a Preliminary Trademark Search?
A preliminary trademark search is also called a “knock-out” search. This is a quick search that determines if there are any obvious problems with the trademark that you would like to use or register.
A preliminary trademark search in the U.S. typically involves searching through the public trademark database at the U.S. Patent and Trademark Office (www.uspto.gov) to see if any identical trademarks are already listed for any goods or services that are similar to yours.
A preliminary trademark search also typically involves some basic web searching on Google or other search engines to see if any conflicting marks are identified.
Anyone can do these searches, but they’re more effective if they’re done by someone who is familiar with trademark searching techniques and the USPTO databases.
A preliminary search doesn’t confirm that your trademark is available. It only tells you that there are no obvious conflicts and that it’s worth investing in a comprehensive trademark search.
What is a Comprehensive Trademark Search?
A comprehensive trademark search differs in three ways compared to a preliminary trademark search.
First, a comprehensive trademark search examines many additional databases. These searches are managed by specialized search firms that have access to databases of company names, state trademarks, press releases, business publications, domain name databases, and many others. Remember, in the U.S., if someone is using a term that is similar to your trademark in any of these locations, it could limit your ability to register or use your trademark.
Second, a comprehensive trademark search uses a much more complete and thoughtful comparison of terms. For example, in a preliminary trademark search, the person doing the search will search on your exact trademark, and perhaps a few obvious variations, such as separate words in your trademark, plurals, reversed words, and so forth. But with a comprehensive trademark search, dozens of different variations will often be checked, along with wildcard searches that identify each important sub-part within your trademark.
Third, a preliminary trademark search gives you a “rough idea” about any obvious problems, while a comprehensive trademark search typically gives you a formal legal opinion that analyzes all of the known risks that you may face if you pursue using and registering your trademark. It isn’t a guarantee, since there is always the possibility of a problem that wasn’t found in any of the databases, even with the comprehensive search. But having a thorough analysis and report of the search results lets you evaluate risks before investing in building your brand.
How Do I Choose Which Type of Search I Need?
Which type of trademark search should you choose? It comes down to money. If you have the budget, a comprehensive trademark search is virtually always the better choice. It gives you more information and more protection against possible lawsuits, failed trademark applications, lost money from changing brands, and other problems. The only exception would be for trademarks where you will use them for a very short time, or invest very little money or effort in building them up, or will not try to register them.
If you’re on a tight budget, you may not feel like you can spend the money on a comprehensive trademark search (which normally costs over $1,000 when it’s done right by an experienced trademark attorney).
If you are using an experienced trademark attorney to file your trademark application, he or she will often perform a preliminary trademark search as part of the application fee. If the preliminary trademark search identifies a problem, your attorney will let you know so that you can decide if you still want to file your trademark application.
If you don’t have the budget to get help from a trademark attorney, you should at a bare minimum do a preliminary trademark search on your own. A little caution and forethought can save a lot of trouble and expense down the road.