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Should I conduct a trademark search before using my trademark?

Why conduct a trademark search before using the  trademark for commercial purposes?

Trademark registration is an effective tool to maximize the reach and profit of your company. It dismisses the application for trademark registration on a similar kind of brand or business name. For example, if I apply before the United States Patent and Trademark Office (USPTO) to register a logo named BMW as a trademark, my application will be rejected as it is already in function. But if I use any other unique name, my application will be successful.

Trademark registration before the USPTO allows your product, brand, or company to be unique from others. The benefits of conducting a trademark search for your brand, logo, design or business name are as follows:

  • You can avoid the risk of any confusion while launching your product, brand, or logo to the consumers.
  • You can avoid the risk of any potential legal consequences if you potentially infringe on another’s trademark.
  • Searching minimizes the risk of refusal of your trademark application by the trademark examiner
  • Researching through a trademark databases allows you to determine the likelihood of obtaining successful trademark registration.
  • You can avoid the chance of using an already existing brand, product, logo, or business name which may have serious legal consequences for you (they will most likely sue you after being alerted by a trademark monitoring service).
  • Conducting prior research before using your trademark allows you to avoid the risk of any trademark infringement.
  • Conducting a search allows you to determine the risk of a notice of opposition from the owner of a similar trademark. 

What should I need to do in order to conduct trademark research?

Holding a registered trademark allows you to have full authority over the mark in the related classes of goods/services registered. No unauthorized persons can use your trademarks. Before starting to use a trademark, whether it is registered before the United States Patent and Trademark Office (USPTO) or unregistered, it is recommended for you to know that the trademark will not have any legal consequences and no objection for infringement from any other person or a company. This risk can be minimized by examining the already existing trademark whether registered or unregistered in the federal TESS database and common law searches. You can conduct trademark research by using the following tips:-

  • Go to the United States Patent and Trademark Office website and search in their Trademark Electronic Search System (TESS).
  • Search in the Microsoft Edge, Google and other search engines regarding any similar trademark is existing in the market or not.
  • Search state trademark registries and business listings.
  • Search sites like Etsy, Amazon, Shopify, the Google App Store, and the Apple App store.
  • Read the Lanham Act and other US Trademark laws to know better whether your mark is a trademark and is protectable under the Act.
  • Ensure that you never use any functioning or existing names, design, product, or logo.
  • Avoid generic and descriptive terms. 
  • Learn which terms are “disclaimed” within your particular class of goods or services.
  • Obtain the services of a Trademark Attorney to increase the odds of success of registration for the trademark.
  • You should ensure that you never discuss the mark that you are going to register for a trademark with others to avoid the chance of copying it.
  • Ensure that before you use your trademark, it is registered.

What will happen if I do not conduct research on a trademark and use it?

Conducting a search for your trademark has many added benefits. It helps you to use your trademark without any fear by minimizing risk. If you did not conduct the trademark research before using it commercially, the following things may happen:-

  • You may be infringing the trademarks of another person or a company.
  • You may face litigation costs.
  • Your trademark may be already be in existence and functioning actively by another.
  • You may not have a successful registration of your trademark before the USPTO.
  • You may waste over a year in attempts to obtain a trademark registration.
  • You may face Office Action from the trademark examining attorney for likelihood of confusion, descriptiveness, or prior appropriation.

Conclusion

A trademark that has been using or in existence with you may be unique or applicable for trademark registration. However, it is necessary to conduct prior research on your trademark to reduce the risk of infringing other’s trademarks.

Let Karana IP get you from Application ™ to Registration ®.

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.

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