phoenixtrademarkattorney The Importance of Conducting a Trademark Search: Avoiding Costly Mistakes – Phoenix Trademark Attorney, Trademark Attorney Phoenix

Phoenix Trademark Attorney, Trademark Attorney Phoenix

The Importance of Conducting a Trademark Search: Avoiding Costly Mistakes

What Is a Trademark Search?

A trademark search is a thorough examination conducted by an experienced trademark attorney of all federal and state databases for marks that might be deemed confusingly similar to the one you want to use. An experienced trademark attorney can review the search report and provide legal advice on the odds of success in getting your trademark approved by the USPTO. Additionally, they can inform you if you’re potentially infringing on a competitor’s mark.

The Importance of a Trademark Search

Trademark clearance is a crucial step in the trademark process that cannot be overstated. Before filing a trademark application with the United States Patent & Trademark Office (USPTO) or any international trademark offices, it’s essential to conduct a thorough search of the proposed mark. Various types of trademark searches exist, including preliminary searches, knockout searches, full U.S. searches, and international searches across different countries or regions. This discussion focuses on how trademark searching relates to ensuring a mark is clear for use and registration in the United States.

The initial and recommended search is the preliminary search, which helps in deciding whether to proceed with a full U.S. search. This can be done by the mark owner or by trademark professionals. The primary aim of a preliminary search is to identify marks that could immediately hinder registration at the USPTO or expose the mark owner to potential infringement claims. Conducting a preliminary search can also help avoid the expenses associated with a comprehensive U.S. search, which can vary depending on whether it’s for a word mark or a design mark. Design clearance searches, especially on a preliminary basis, tend to be more complex and costly.

It’s not uncommon to find that the mark you wish to use is already in use by another party or is registered with the USPTO. Entrepreneurs are increasingly aware of the value of protecting their intellectual property, leading to a rise in trademark filings. Selecting, clearing, and adopting a trademark can be a lengthy process, which is why it’s best to contact an experienced trademark attorney like myself.

Importantly, a preliminary search goes beyond merely identifying identical marks for similar goods or services, as in a knockout search. Its focus is on identifying marks that could create confusion in the marketplace. This involves considering multiple factors to determine the likelihood of confusion, detailed in resources like our Likelihood of Confusion Refusals – 2(d) Refusals webpage. Key considerations include similarities between trademarks and the relatedness of goods and/or services.

Conducting a preliminary search involves examining databases of the USPTO and conducting internet searches to identify unregistered or common law uses. It’s crucial to evaluate the visual appearance, pronunciation, meaning to consumers, and overall commercial impression of the mark. Additionally, comparing the goods and/or services associated with each mark is essential. For instance, if one mark is used for apparel and another identical mark is used for handbags, consumers might mistakenly assume a connection between the two companies if they commonly sell both types of goods.

If the preliminary search reveals no immediate obstacles to registration or use, it’s advisable to proceed with a full U.S. search conducted by a professional search company. It’s important to note that no trademark search can guarantee 100% success in registration or eliminate the risk of infringement entirely. However, by conducting a thorough trademark clearance search, you are taking significant steps to protect your investment in a new mark while minimizing potential risks. 

Lesson Learned: Importance of Trademark Searches

The owner of a brewery invested over $50,000 in marketing and developing his brand centered on beer sales. However, by skipping a proper trademark search initially, he encountered a significant challenge. A winery from another region initiated a trademark infringement lawsuit, alleging similarities between their brand names. The potential legal expenses and the risk of substantial financial loss compelled him to undergo a complete rebranding process.

This costly experience underscored the critical importance of conducting thorough trademark searches before launching a brand. Following this setback, he sought legal advice, and together we conducted a comprehensive trademark search for his new business name. With the assurance that his new brand would not infringe on existing trademarks, he could redirect his focus towards business growth without the looming threat of legal complications.

If you have any questions regarding trademark clearance, please feel free to reach out by calling me at 480.875.2700 or send me an email at

Categories : Trademarks