Where should a business turn for trademark help? There are three trademark search options when considering how to make sure you don’t end up wasting a lot of time and money on a trademark you can’t use. The three options are: (1) hire a trademark attorney or a non-attorney that specializes in trademark searching; (2) use an online trademark search service; or (3) do it your self using the USPTO Trademark Electronic Search System or TESS and an Internet search. While the choices seem straight forward, the trademark help waters can quickly muddy and the online trademark search service category is probably the muddiest.
Most online trademark search engines do not tell you how they are searching or what they are searching. Instead, they simply promise to find any problematic marks for you. If you are investigating which trademark search engine to use and the service says it will conduct a direct hit search or search for identical marks, leave that site right away. Conflicts between two marks rarely are because of the use of an identical mark. And no trademark attorney or trademark search specialist would search only for identical marks.
An online trademark search service provides a lot of benefits over a traditional, manual trademark search. Computer software can conduct more thorough, quicker, and cheaper searches than a person. If you decide to use an online trademark search engine, make sure it considers the key likelihood of confusion factors like a manual search would consider these factors.
If you choose the do it yourself option from the available trademark search options, some people may also say you need to pay a professional search company to look for any conflicting marks because trademark rights in the United States are created through use not registration. Whereas, others will say an Internet search is sufficient. Like most things in the law, the answer, unfortunately, is it depends on the business or product.
Absent a federal trademark registration, trademark rights are geographically limited in scope. This means that trademark rights extend only to those areas where the mark is being used and where the trademark owner’s reputation may have taken her. If a business decides to focus on a particular geographic area, a professional 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 nation even if the trademark owner is not offering their goods or services in every part of the country. This means that 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 save some money by not conducting a professional trademark search for conflicting common law rights. 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.
While doing it yourself is one of the trademark search options, conducting a trademark search without any assistance is probably not the wisest decision especially when the use of computer software has made the availability of a reliable trademark search affordable for any size business. Regardless of the trademark search option you choose, getting some trademark help is always a good idea.