As trademark attorneys, we are often asked what the rationale behind the search process is and why we stress its importance prior to filing an application for registration. We thought it might be helpful to provide a short list of seven reasons why you should take the time to conduct a proper trademark search:
- The United States trademark laws are based upon the “first to use has priority” system. As such, if someone already is using a particular trademark, they have superior rights to it.
- You don’t want to knowingly (this includes the “should have known” standard) infringe on someone’s trademark. This can result in possibly having to pay damages such as: (1) disgorgement of profits; (2) damages caused by the infringement, which can be trebled; (3) costs of bringing the lawsuit; (4) attorney’s fees; and (5) destruction of inventory.
- A trademark owner can use your failure to search as a willful attempt to “blind yourself” to readily available information.
- You don’t want to waste time, money, or resources in developing your product, the packaging, and advertising only to have to change the name or logo later after being accused of infringement.
- Searching prior to applying for registration may help you identify potential obstacles to registration, such as those encountered by a similar trademark. You can even see how the applicant responded to the Office Actions under the TSDR tab on the USPTO website.
- Similarly, you can see which types of trademarks tend to be accepted or rejected by the USPTO and design your trademarks accordingly, thereby optimizing your chances of approval.
While search reports for a comprehensive search do cost a few hundred dollars, it is much better to spend a small amount of money up front than to potentially spend a lot of money later in litigation. See #2! Please contact David Lilenfeld or Sonia Lakhany for more information on trademark searching or clearance.
David M. Lilenfeld