Have you identified the distinguishing element of your company that will allow people to remember and recognize your company even after ten years? Then, you must first file a trademark for that identity. A trademark can be anything, a logo, symbol, word, phrase, etc. Remember that the trademark must be selected as if your mark is similar to any registered mark, your application may be rejected, and you may face difficulties in future. Furthermore, in order to avoid any accidental infringement, you must conduct a comprehensive trademark search before submitting the trademark application.
Trademark Infringement
Trademark Infringement may either occur by accident or intentionally. The main behind accidental trademark infringement is that the person who has infringed the trademark of another has not conducted the proper trademark search. Due to this, the infringer might have thought that his mark is unique and no other person is using it, but later on, it may be discovered that someone else is already using the same trademark. In this situation, both parties will be at a loss, and infringing another person’s trademark is wrong, whether it is intentional or accidental. Now, it is upon the party whose trademark has been violated to file a suit against the other. In order to save yourself from any such complications, you must contact a trademark attorney who can help you better conduct the proper trademark search so that you don’t face any difficulties related to your trademark in the future.
What is a Trademark Search?
In simple words, trademark search is the process of searching whether your selected mark is unique or if someone else is already using a similar trademark. You can also do it on the internet. Even if you search your selected mark on the internet, you will automatically get several results as to who is using it and the description of the products or services they are offering. Now, when it comes to registration of a trademark as the identity of your company, do you think simply searching for a mark on the internet is enough? No, as once you start using a mark, the goodwill of the company is built on that particular mark, and it will be difficult for you to change the company’s identity later on.
In order to avoid all such complications that may come your way in the near future, it is always advisable to hire a trademark attorney who can help you with a comprehensive trademark search. Hence, there are lesser possibilities of trademark infringement or rejection of your trademark application. Moreover, before submitting a trademark registration application, you must ensure that your trademark is unique and no one else uses the same trademark. This increases the chances of approval of your trademark application.
Additionally, after submitting the trademark application, if it is found that someone else is using a similar trademark, then the registrar or examiner may reject your application, and you may be required to change your trademark.
Tips for Conducting a Comprehensive Trademark Search
Here are a few tips that will help you in conducting a comprehensive trademark search in order to avoid accidental infringement of anyone’s trademark:
- Figure Out The Purpose Of Your Trademark Search
It is important to identify the purpose for which you are conducting the trademark search, as there are different databases and sources to search for a trademark. If the purpose of the search is determined, then it will be easy to conduct the search only in a few databases that will be relevant to your query. Moreover, a person may conduct a trademark search for several reasons, such as checking for trademark availability, determining the potential of the trademark, identifying the trademark infringement issues, etc.
- Start a Preliminary Trademark Search
You can conduct a comprehensive trademark search only after completing a proper preliminary search. Moreover, a preliminary search will include searching a mark in order to identify the conflicts or infringements. It can be conducted using the internet browser, social media, or online database while using the mark or its synonyms to search for similar marks. This is the step through which you can confidently submit your trademark application if found that no similar marks are already in use.
- Initiate a Comprehensive Trademark Search
A comprehensive Trademark search is conducted only after conducting the preliminary search. In this, the trademark attorney searches different databases and online portals, including the database of different states, countries, or nations. This search is conducted using the selected mark, variations, synonyms, combinations, similar marks or words. A comprehensive search is focused on finding the conflicts that may arise due to any similar mark which has not been determined during a preliminary search.
- Check the Common Law Trademarks
The next step is to thoroughly check the common law trademarks, which the unregistered trademarks but are protected under the law. Such trademarks may not be there in the list of any database, but you will find them protected under state laws. Therefore, you need to look at the common law trademarks and search for such trademarks that are already in use to avoid infringement in future.
- Submit a Trademark Registration Application
Once you have conducted the proper trademark search and are confident that no similar trademark exists, you can submit the trademark registration application. Furthermore, you can now hire a trademark attorney to ensure the trademark search has been properly conducted. If found any issues, the attorney can conduct a more comprehensive search and guide the applicant in the submission of the trademark application. He can also provide guidance on matters of trademark registration and will determine the potential of your selected mark.
After submitting the application, the examiner will check it and approve your application if no issues are found. Then, the trademark will be published in the trademark journal for three months, which shall not extend beyond four months. If no objections are raised in the specified time, then your trademark will be registered.
- Trademark Monitoring
Once your trademark is registered, you cannot sit aside freely. Now, the main responsibility is on the trademark owner to keep a regular check on other registered trademarks and check for any trademark infringements. You can monitor the trademark either manually or with the help of automated software. Regular monitoring will identify the infringement and save your brand’s reputation, as even if anyone else tries to use your similar trademark, you will eventually get to know about it.
- Use Trademark Search Tools
There are various trademark search tools that you can use for searching similar trademarks. With the help of these trademarks, you can efficiently conduct a comprehensive search as you will have access to a broader database with more search filters and monitoring services.
- Search for a Unique Name
With an increase in the number of companies and businesses in the world, the digital presence of every company has become necessary. This creates an obligation on the parties starting a new business to select a domain name and search whether the name is unique and not already used by anyone. In case your selected name is already in use, you will not be allowed to take the same domain. As one domain is registered only to one person and no other person or company can use the same domain.
- Keep A Regular Check On Trademark Rules And Laws
As the law keeps changing and amending, there is a need to keep a check on trademark laws and regulations. This will help you to stay in touch with any changes or advances happening in the law, and you may keep your trademark updated according to the change in laws. The best way to stay up to date with the laws of trademarks is to consult a trademark attorney who will quickly update you regarding any changes in the trademark law. This will also help you in keeping your brand requirements updated.
Short-Comings of Comprehensive Trademark Search
Remember that a trademark search is never exhaustive or flawless while conducting your search. Databases are used for trademark searches. However, they might not always be complete. Simply by submitting a trademark application for intent to use, a person can acquire rights to a trademark. Additionally, databases aren’t always updated when new trademark rights are established. Last but not least, common law rights might establish a brand without registration.
The limits of trademark searches provide justifications for hiring a lawyer’s assistance in doing trademark research. In addition to databases, other methods and instruments are available to attorneys for trademark research.
Conclusion
A lot of times, it has been seen that the people who are targeted for trademark infringement[1] are the ones who have not conducted a proper trademark search. You can be the next target if you use a trademark without conducting a proper search and accidentally start using a mark that is already registered by someone else. Given that everything depends on how thoroughly a trademark search is conducted, company owners are advised to seek the advice and assistance of qualified experts, such as trademark attorneys, who will guide you in the trademark search process.
Read Our Article: Simplified Instructions To The Trademark Search Process
