What is a trademark search?


Trademark searches refer to any action taken for the purpose of determining whether and/or a trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate searching strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant’s allocation of resources.

Trademark searches are generally classified as being either a “knock-out search” or a “full search.” Each type of search is explained below.

Knock-out search

A “knock-out” search refers to a search of the Federal Trademark Register to determine if the trademark in question is likely to fail in securing a trademark registration.

Scope of knock-out search

Knock-out searches cover all the marks on the Federal Register Trademark Electronic Search System database. This includes both applied-for marks that have not registered and registered marks. It also includes registered marks that have since been cancelled and trademark applications that have been abandoned. This database will return identical or close matches for a trademark that includes the words in the mark in question.

A knock-out search typically only includes searches for the mark itself, and not close variations on the mark. For example, if the proposed mark was LAMP COMPANY, the searcher would look for results for “Lamp Company,” but not “Lamp Store” or “Lighting Company” even though these marks could come into conflict with Lamp Company due to their proximity in meaning.

Purpose of knock-out search

Knock-out searches provide the applicant with information about whether a trademark is so likely to fail in an application that it does not merit further searching or an application. Sometimes the knock-out search is all that is necessary to determine that a proposed mark is likely to conflict with a registered mark, and in those situations it is useful to rely on that knowledge rather than incurring additional costs to pursue the mark.

A knock-out search does not provide comprehensive results of a trademark’s availability. Therefore, a clear knock-out search cannot be relied on as a predictor of success at the application stage; nor can it assure the potential applicant that the mark is not an infringement risk.

Getting a knock-out search

At Richards Patent Law, we perform knock-out searching prior to initiating any full searches or trademark applications. Interested clients may also ask for knock-out searches on lists of potential trademarks in order to narrow their search for a mark to pursue.

Full search

A full search refers to searches that cover all avenues for trademark protection in the trademark system that is the subject of the search. Searching firms use computer software to run these searches and categorize the results according to how close they are to the mark that is the subject of the search. The results are then compiled into a search report containing essential data for each of the marks the results cite. This will include marks that are identical to the subject mark as well as close variations on the subject mark that cover potentially related goods and services. Search reports are usually several hundred pages. Attorneys then review the results.

Scope of full search

Full searches are done on trademark system basis, which usually breaks down to the country. However, there are some trademark systems provide for protection across several countries, such as the Office for Harmonization in the Internal Offices (OHIM) in the European Union. The territory of the search should correspond to the country or countries where the applicant is interested in securing rights.

Within each country, there may be several avenues for trademark protection. These platforms would be included in the search. In the United States, trademark rights can come from Federal registrations, state registrations and common law use. The full search results for the United States include the Federal Register, state registers, and potential sources of common law rights, such as uses of the mark on the Internet, registered business names and domain names.

The results reported for each system of trademark protection will include marks that are identical to or similar to the mark that is the subject of the search. If the mark in question is made of multiple words, the search results will include marks containing all distinct words from the mark.

The marks that are returned in the search results will include marks that cover related goods and services as well as marks that cover unrelated goods and services. The attorney reviewing the results will look for references that include marks that are similar and cover similar goods/services.

Design mark search

Design mark searches cover marks that include a non-verbal graphic or stylized font. These searches return results that show similar graphics for similar goods/services.

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