Common Law Trademark Search. Everything You Need To Learn
What is a Common Law Trademark Search?
Common law trademark Search is the most comprehensive type of trademark search a company can perform. It involves searching databases, news, financial, legal, and business records. The goal of a common law trademark look is to locate if someone is using a comparable trademark even though it’s not registered in the Patent and Trademark Office(USPTO).
Common Law Trademarks and Registered Trademarks
According to the USPTO, trademarks are “words, phrases or symbols that identify the source of the goods, either one party or another.” Trademark owners can register trademarks at the Patent and Trademark Office. To make a trademark valid, it does not need to be registered. The symbol (r), identifies a registered trademark. Unregistered trademarks can have the ™.
The US trademark rights stem from their use, not their registration at the USPTO. Common law rights attach to trademarks that are used on an ongoing basis by a business. Competitors that use identical trademarks can be sued by the rights holder for trademark infringement.
Common law trademark rights have some restrictions. Federally registered trademarks have validity throughout the nation. Owners of trademarks that aren’t registered can only claim rights in the places where they actually sell their products.
It is the goal of trademarks to avoid confusion. It is clear that a trademark is registered if the public recognizes it. This rule protects the public, but it can make things more difficult for companies. It is insufficient to simply search federal databases prior to launching a product.
Understanding the Difference between a Trademark Search or a Common Law Trademark Search
A trademark search will only include trademarks that are registered in both the USPTO or state databases. Common law trademark searches include many other resources that can also be used to search trademarks that are not registered.
A common law trademark search can help you determine if your chosen mark is allowed to be registered.
Common Law Trademark Search Resources
There are multiple resources that you could use to perform your search. The most popular are:
• InternetSearch the internet first. Searching for the mark you are looking for and other similar marks in search engines like Google or Bing will give you an immediate answer.
• Newspapers and TV sourcesNewspapers can be a good resource to search for common law trademarks. It’s impossible for us to list all of them. However, it is possible to include financial articles, lifestyle publications, national newspapers, and TV program transcripts in your search.
• Register of State TrademarksEach state maintains a registry where you can look up marks that have not been registered with the USPTO.
• Administrative and case materialsYou should include in your search the four million U.S. cases and U.S. statutes.
• Yellow PagesThe Yellow Pages, although not as used today, is still a valuable resource to locate marks not in Federal and State government records.
• Documents for business and financial purposesFor your search, you can also use mergers, acquisition reports, U.S. government and private company records, and international company records.
Common Law Trademark Lookups: Some Reasons to Consider
Before you launch your business, it’s smart to perform a common legal trademark search for the name you plan to use. This is why
• To accelerate the launch of a business
It can take upto one year for your trademark to be registered. This is a long period of time to wait for approval by the USPTO before you can sell your product/brand. A common law search will take just a few days to be completed by a trademark attorney. You will be able to use the trademark and start your company much faster if you do not wait for registration approval.
• To save money
After completing an exhaustive trademark search, spending money on advertisement, gadgets, business expenses, is not wise. If the USPTO rejects you application before you start manufacturing your product, all your money will be wasted. In addition, you may be sued for trademark violation if the USPTO rejects your application.
• To remove confusion from customers
Any company would be best to sell a product customers can recognize without any confusion. A similar mark can cause confusion later.
• To avoid trademark infringement
You can get peace of mind by doing a common search to avoid being sued if you infringe on a trademark.
If your competitor sues you and wins, you will not be allowed to use the mark. This means you will need to replace the mark on all your advertising materials, website and gadgets. This can prove costly. A court could also order that you pay your legal fees, as well as those of your competitors, and damages to your accuser.
It is important to remember that although the USPTO may approve your trademark application, it does not mean that you automatically have trademark rights. The USPTO checks only its database to decide whether or not to approve a trademark application. A company can own the rights to the mark if it has used the same or similar mark even though it has never applied trademark registration.
If you register your trademark, and the previous user sues for infringement, your trademark registration will be cancelled. You won’t even be allowed to use the trademark anymore. If the trademark rights of the previous user were in a specific area, your business will be restricted.
A corporate name approved by a Secretary-of-State doesn’t give you trademark rights. In fact, you might still be sued.
• To establish a strong brand
The value of your brand might be lower if you choose a trademark that is identical to other brands or confusing to the general public. It is smarter to search thoroughly, pick a name that stands apart, and create a stronger brand.
How to Search for a Common Law Trademark
To ensure your mark is legal and protected, there are some steps.
1. Search the Internet for your markStart by searching the web. Use a search engine like Google to find your industry and browse through the products.
2. Search the USPTO DatabaseNext, search the USPTO database for your mark. Although not enough information to give you a definitive answer it is a good start. Simply go toUSPTO homepageClick Trademarks then Search Trademarks Database. The redirection to theTESS searchSearch engine which allows you search for a simple wordmark or word. If your mark is visual, you will first need to look it up.Design Code Search ManualYou can find the appropriate design codes here.
3. Try to search as broad as you canSearch beyond your immediate area. Look at other product classes that might be relevant to your product. The rights that a company gains by acquiring trademark rights can also be applied to related products that it may offer in the future.
4. You don’t have to search for the exact same mark.Find possible variants of your mark. Look out for words with similar sounds, plurals or gender variations. Also, look out for foreign translations. Infringement of trademarks can result from a similar name that confuses the public.
5. Take your search to the next level and seek professional helpAlthough it is good news that similar marks are not found in the USPTO or on the Internet, this does not mean you cannot use the chosen trademark. It is time to review the resources listed above and do a Common Law Trademark Search. A hiring service is available if you feel overwhelmed at the thought of undertaking such an extensive search.A trademark lawyerto complete the research. Professionals will prepare a report for you.Similar trademarksThey find. This type of search can be very expensive depending on the quality. It can cost anywhere from $25 to $500, but it’s well-worth it if it means you can invest lots of money into your new business.
6. Register your trademarkCongratulations to anyone who has completed a commonlaw trademark search, but did not find a mark that was similar to theirs. You can now apply for registration of your mark at the Patent and Trademark Office.
Frequently asked Questions
• What if I discover a similar marking in use?
Don’t panic if a similar symbol is already in use. It can be frustrating but it is better that you find out as soon as possible. You could be subject to a ceaseand desist email and have to pay damages as well as attorney fees. This could cause your business to collapse. Perhaps it is time to think about a different name for your product.
However, it is not always so. When deciding whether two marks have been in conflict, courts look at many factors. Your chosen mark may be allowed to be used if they are identical and are used for different product classes. Another thing to consider is how well-known your competitor’s trademark is, and how long it has been in usage. You should consult an attorney in cases like this.
• Who should carry out the search
It can be costly to conduct professional searches. Many people choose to do the search before applying for a trademark. A number of other databases, both free and inexpensive, are available to business owners for searching for similar marks. Unfortunately, most people don’t realize that searching these databases – which can often have outdated data – is not a reliable way to search for similar marks.
However, this doesn’t mean you should not use these tools. It is worth searching through the databases. However, unless you have the expertise to conduct full searches, you should hire an expert to help. Only an experienced trademark lawyer can interpret the results and advise you on your rights.
You should also be wary of companies that claim to offer cheaper searches. They usually search the same databases that your own searches. The cost of common law trademark searches by professional attorneys is high, but it is necessary if your business is serious.
Even if the time and patience required to review the databases and other resources is there, it’s easy to overlook something. This can lead to an attorney’s fee that could be even higher.
To launch a strong, successful brand, it is important to perform a common-law trademark search. The lawyers in UpCounsel’s marketplace can answer any questions about trademark searches. UpCounsel lawyers will help your business get off to the right start. They have an average of fourteen years of legal experience, and they have a degree from some top law schools in this country.