While it is not required to perform a trademark search prior to filing an application, it is encouraged to search the registered trademarks in the countries that one wishes to apply to see if any mark has already been registered or applied for that is similar to the desired mark, and is used on related products or services. A search can be performed for identical, similar, and phonetic matches to the mark. Intellectual property firms specialize in performing such searches.
Trademark ownership is based on who uses the mark. Since one may have trademark rights (prior user rights) on a mark that was never registered, clients are advised to have a search performed for unregistered marks through other publicly-available avenues as well.
The criteria for retrieving relevant marks in a trademark search (sometimes referred to as a clearance search) that can raise issues with the registration of a target name include:
- marks that are identical or similar to the proposed mark,
- marks being used in the jurisdiction in the same locale as the proposed mark is to be used, and
- marks being used for the same or similar services or products as the proposed mark.
A trademark search helps in choosing names that are not already being used for the same goods or services. This substantially reduces the risk of infringement claims and associated damages, important defensive aspects to consider in an IP strategy. The search also helps one save time and money if one decides to register a name that has already been cleared. Additionally, the courts have assessed special damages in some cases against an infringing party, ruling that failure to perform a thorough search was in bad faith (in which the client was advised by an attorney to perform a more complete search).
Since no search, no matter how thorough, can cover every possible conflict, one has to live with a small degree of uncertainty that someone else may have used the mark first. However, if you have a professional search performed for both registered and unregistered marks, check for all match types, and cover the area of products or services, the chance of encountering a conflicting mark is effectively minimized.
FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark searches. On Your Mark, Get Clearance, Go!