Like most tasks facing new business or the creation of a new product, where to search for conflicting trademarks can be a daunting task. Some people will say you need to pay a professional search company to look for any conflicting trademarks. The professional search company will produce a comprehensive search report that is usually hundreds of pages and costs about $800. Half of the report is usually directly at uncovering common law or unregistered trademarks that may be concerning to you. If a retain a trademark attorney to review the results and provide a legal opinion on the availability of your proposed mark, the costs will likely exceed $1,000. Whereas, others will say searching the Internet is sufficient. Like most things in the law, the answer, unfortunately, is it depends on the business product, or service.
Absent a federal trademark registration, trademark rights are geographically limited in scope. This means that trademark rights extend only to those areas where the trademark is being used and where the trademark owner’s reputation may have taken them. If a business decides to focus on a particular geographic area, a professional trademark search for unregistered or common law rights may be unnecessary.
The benefit of a federal registration is that it takes those geographically restricted rights and expands them to the entire nation even if the trademark owner is not offering his or her goods or services in every part of the country. A party who federally registers its mark can force a subsequent user to rebrand once the senior party enters the junior party’s market.
This means that every business must search the United States Patent and Trademark Office for any conflicting marks, but may be able to save some money by not conducting a professional trademark search. Even if a business forego’s a professional search, an Internet search should still be conducted to uncover any unregistered rights in the geographic area where the business intends to do business.