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Should I conduct a trademark search before I file my application?

Why do I need to conduct a trademark search before filing an application?

Registering a trademark before the United States Patent and Trademark Office (USPTO) gives you protection over your business name, design and even your own logo. It is done to protect your mark from infringement and to enforce your rights against an infringer. Conducting a trademark search before filing your application for the registration of the trademark will reduce the chance of it being rejected.

Trademarks are an essential tool for you and your company to have complete autonomy over your product or brand. In the United States, it is the United States Patent and Trademark Office that grants trademark registration. Before filing a trademark application, you must conduct a comprehensive search for your trademark to avoid any future difficulties. The reasons you should conduct a trademark search are as follows:

  • To clear any confusion concerning your product, design, brand or logo with those of the others.
  • To avoid infringing the trademarks that are registered by other applicants.
  • To avoid the chance of refusal or any Office Action by the USPTO.
  • To avoid any similar identification marks in common law.
  • To alter your marks if it is infringing the trademarks of others.
  • To prevent any fault in the filing of an application before the USPTO.
  • Save you time & money.

How can I conduct a trademark search before filing an application?

For successful trademark registration, it is highly recommended for you to conduct a search before you file for an application through the Trademark Electronic Application System (TEAS) of the USPTO. 

  • Use the Trademark Electronic Search System (TESS) developed by USPTO for searching any trademark that has a similarity with yours.
  • Go to the World Intellectual Property Organization (WIPO) brand database and search for any name, design or logo that has a similarity with your trademarks.
  • Search all state trademark registries.
  • Conduct a google search, social media search, Amazon search, and app store searches for common law hits.

If you have any difficulty in researching the existing trademarks seek the facility of an Attorney for both search and filing an application. All searches should be reviewed by an experienced trademark attorney to inform you of the risks on the federal and common law levels.

What will happen if I do not conduct a trademark search before filing my application?

If you fail to conduct trademark research prior to your application then you may face the following consequences:

  • Your application may be rejected by the United States Patent and Trademark Office.
  • Your application may face Office Action refusals.
  • You may be required to change or alter the marks after spending money on marketing and product development.
  • You cannot use your trademark for commercial purposes.
  • Approving your trademark for registration may take several years.
  • If you get sued for infringement, then you cannot claim “innocent infringer” defense if you did not obtain a trademark attorney’s search opinion prior to filing your application.

Conclusion

Trademark registration protects your trademark and gives you rights to enforce your intellectual property. But to register your trademark, it needs to go through a rigorous process of examination so that your mark is not confusingly similar to another mark. Moreover, conducting a prior search may help you to reduce these consequences, save you time, and money in the long run.

Let Karana IP get you from Application ™ to ®.

If you have a new brand to protect, Karana IP has the ability to help you choose, protect, and enforce trademarks under state and federal law. Contact Karana IP Law, LLC, today if you have questions about the selection, registration, protection, or enforcement of your mark.
If you would like to begin the trademark registration process, please submit a trademark intake form and Karana IP will contact you within 24 hours.

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