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Doug Cook is retiring and Steve Cook has moved to an in-house counsel position. As such, we are no longer accepting new clients. Thank you.

Trademark Search

In the United States, a person or entity acquires rights in a trademark by actually using the trademark, even before the mark is registered, if at all. While requiring a prospective trademark holder to use the trademark before it can be registered has significant benefits, e.g. precluding "squatters" from registering trade or service marks with the intent of selling right to such marks for a significant profit at a later date, such a policy does create uncertainty as to whether a proposed trademark can be used without infringing upon an existing trademark.

In order to provide more certainty as to the availability of a particular trade or service mark, prospective mark holders often conduct some form of trademark clearance search.  While many different methodologies can be employed to perform trademark clearance searches, such searches can generally be classified as either (1) knock-out searches or (2) comprehensive searches.

Likelihood of Confusion Standard

Before getting into some the aspects of trademark searches it is important to understand the standard by which both the United States Patent & Trademark Office ("USPTO") and the federal courts determine whether a particular trademark or service mark infringes upon another. In general, the main question of a likelihood of confusion determination is wether there is a likelihood of confusion as to the source of sponsorship of the goods or services because of the marks associated therewith.

The U.S. Court of Customs and Patent Appeals, the precursor to the U.S. Court of Appeals for the Federal Circuit, articulated to the following factors, often called the DuPont Factors, that are used to determine likelihood of confusion:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity or dissimilarity and nature of the goods or services as described in an  application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use).
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
  10. The market interface between applicant and the owner of a prior mark.
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion, i. e., whether de minimis or substantial.
  13. Any other established fact probative of the effect of use. 

None of the foregoing factors is dispositive in a particular case; rather, the analysis of whether there is likelihood of confusion depends heavily upon the facts and circumstances of each case.

Knock-Out Search

At its most basic level, a knock-out search is used to quickly identify whether there are obvious conflicting trademarks in order to help a potential trademark holder decide whether to pursue registration of a particular mark.

Although there is no set standard for a knock-out search, most knock-out searches typically involve searching the United States Patent & Trademark Office's TESS database of identical pending and registered trade and service marks. While not all knock-out searches are limited to identical marks, many searchers only search for identical marks without searching for marks that sound the same (with a different spelling from that of the proposed mark) or include similar design elements, this is especially important in light of the he "likelihood of confusion" standard.

In addition to a TESS search, a knock-out search will often involve a Google search for the proposed mark as well as a query of the WHOIS databases for domain names.

Most knock-out searches, however, don't include searches of state trademark and trade name registrations, press releases, business publications, and other common law references.

Comprehensive Search

In stark contrast to a knock-out search, which gives a potential trademark holder a rough idea as to whether a particular trademark is available, a comprehensive search gives a potential mark holder a legal opinion as to the known risks associated with a particular proposed trademark.

Unlike a knock-out search, a comprehensive search generally takes into account many different variations of a proposed trademark or service mark, examines many distinct common law data sources, and goes into much greater depth as to each source. The cost of a comprehensive trademark clearance search and its associated opinion letter, generally more than $1,000, is significantly higher than the cost of knock-out search, which is often included with a trademark application fee charged by an attorney.

Although it is certainly safest to order a comprehensive search, the cost may be prohibitive depending upon a number of factors, including: the potential mark holder's budget, the amount of capital the potential mark holder will invest in the trademark or service mark, the length of time that the potential mark will be used, etc.

This brief post is by no means comprehensive. Always seek the advice of a competent professional when making important legal decisions.

Steve Cook is a trademark attorney in Mesa, AZ. Although Cook & Cook's office is located in Arizona, the firm represents clients throughout the United States.

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