眾律國際法律事務所

Trademark search is important. Trademarks are considered as one of the most important and valuable assets of a business. A good trademark would allow a business to build brand reputation and public goodwill in its goods or services sector. A trademark search is a review of various information and helps to ferret out potential conflicts (which is, intent-to-use, prior use to a similar mark). The trademark search report provides useful information. Such search can give us an idea of the protectability of the mark especially whether such trademark is distinctive or diluted and for which trademarks a particular company owns. If the search findings show that there are numerous references to similar mark for similar goods, the proposed mark may be considered weak and the scope of protection would be narrow. Searching a trademark prior registering is crucial as forgoing a search can be risky. Defendant’s failure to conduct trademark search may constitute “carelessness” and the court may weight in favor of plaintiff’s right to injunctive relief.[1] The description of goods for the proposed mark must be furnished in arranging for a search. It is crucial to insert accurate trademark descriptions because the search will focus on similar marks for similar goods as well as identical marks for unrelated goods.

Trademark search is usually conducted with a review of trademarks recorded on the register for that particular country. Some trademark searches may need to cover multiple countries. It is however uncommon for a trademark to be available for use and registration in all countries. Therefore an alternative trademark may be required in some other countries. Such searches can take about one to two weeks to complete, however it can also be as quick as a few days or as long as several months. Longer time is usually required if there are adverse results and additional steps needs to be taken.

United States for example, “full search” would include searching the U.S. Trademark Register; U.S. pending trademark applications; market directories; state registrations; domain names; telephone directory listings; trade name listings; reported directions and online database and industry publications directed to the goods or services being searched. Such trademark search should be analyzed from two perspectives that are: protectability of the mark from infringing use by others and availability of the mark for use.

Sometimes it can be difficult to determine when you spot potential trademark conflicts. This is especially the case between competitive, similar or closely related marks or goods. You must first evaluate whether the prior user has grounds for protest. In addition, if such grounds for protest exist, you must assess the risk of monetary relief or injunctive should suit be filed. Nevertheless, sometimes potential trademark conflicts can be rested by further investigation. It is important to check whether such trademark is still in use or whether such mark was discontinued. However please keep in mind that even if a trademark registration has expired, such trademark may still in use. One of the reason for such expiration may be due to inadvertent failure to file the necessary maintenance documents. The owner of the expired registration may still be entitled to rely on common-law rights based on his/her continued use.[2] Alternatively, when there is a potential conflicting trademark, you can possibly seek for the other trademark owner’s consent. If you believe prima facie the description of goods on its surface is similar, but the channels of distribution and purchasers do not overlap with each other, it is possible for the first user to be willing to consent for your use. You might also sweeten the negotiation by imposing some restrictions.