Sometimes the Adler Law Group, (“Firm”) is called upon to perform trademark searches or trademark application filings. However, it is vital to understand the limits inherent in the process and the ability to determine the availability of any given trademark. The Firm NEVER conducts a search to determine, or opine on, the availability of any given trademark unless specifically engaged to do so.
A Trademark Search should always be conducted well before one begins using a trademark. For example, if you are planning a marketing campaign around a name or phrase, you should make sure that the proposed mark is “clear”, i.e., no one else is using anything “confusingly similar” for the same or similar goods and services. Failure to clear a mark for use can lead to claims for damages for infringement and/or dilution, loss of goodwill and loss of the goods themselves, not to mention loss of the time and expense creating, developing and marketing the product or service.
Although the search process is intended to reduce the potential for infringement and dilution claims, the risk of challenge to an application, registration or mere use of a mark is never completely eliminated. Even an especially thorough search may not uncover every potentially conflicting mark.
Registration with the Trademark Office is not a prerequisite to obtaining trademark rights in the U.S. Many valid trademarks exist at common law without ever appearing on the federal trademark register. Some appear in state trademark registrations (although these registrations do not always reflect actual use); others are not registered at all.
Trademarks are source identifiers. therefore, to the extent that a trademark is distinctive, identifiable and memorable it is more protectable. Brand names often incorporate deliberate misspellings, puns, slang, and other variations on otherwise common words. Although a search would attempt to retrieve corrupted spellings, word plays and colloquialisms, there is no guarantee that all such variations will be found. As an additional precaution one should consider a search for foreign language equivalents and other variants on a proposed mark.
Although some effort should be made to conduct a “common law” search using Internet search engines and news databases, this is not always conclusive of common law use. Since these databases were not expressly designed for trademark searching, there is no guarantee that all common law uses, corrupted spellings, irregular spacing or punctuation, or other variations will be identified.
The Existence of a Live or Abandoned Application Is Not a Legal Opinion About The Right to Use a Trademark Registerability, Strength or Weakness.
Please note that filing an application to register a federal trademark is not a legal opinion about the registerability of any particular trademark, the right or absence of the right to use a trademark, the strength or weakness of any trademark registration or application, or the likelihood that any third party may, or may not, seek to register a similar mark, seek to oppose any application, or seek to cancel any registration.
We welcome your comments and feedback!