Do you want to know what the purpose of a trademark search is? Is a Google search enough? Isn’t it enough if I have the .com or top level domain name?
In this post, I’m going to help you to better understand the reasoning behind a full trademark clearance search.
The purpose of a trademark search: answering three questions
So the purpose of that comprehensive, full-blown trademark search is to kind of answer three questions. And those questions are:
“Can I register this mark?”
“Can I protect this mark?”
and “Can I use this mark?”
Your chances that the trademark can be registered
So let’s talk about that first question. “Can I register this mark?” This question is answered by looking in the US trademark database and seeing what’s out there.
What exists in the US trademark database that could be a problem? And what are those problems? Is there something similar out there that could block my application? Or are there so many similar marks out there, that it’s most likely that my application can just sail right through? This is a crucial part of the registration process.
Remember, these are the types of questions we can answer looking at the US trademark database. But it doesn’t end there.
Is the mark protectable?
Next, we ask “Can I protect this mark?” Remember how I just said maybe there are so many similar applications that your application might just sail on through?
Well, that’s great for registration purposes, but not as great for protection purposes.
The logic on the registration process is: well, there’s so many out there — so many in the Trademark Office database — there should be room for one more, right?
But from a protection standpoint, if there are so many others, if there are 10 others out there, then it’s going to be harder for you to stop someone else from coming along the same way it’s harder for all those others to stop you from coming along. It has to be pretty darn close to your trademark and pretty darn close to your products or services.
Even if you’re not going to apply for registration, are there obstacles to using the mark?
Finally, that last question, “Can I use this mark?”
Remember: in the US, trademark rights come down to first use, NOT the first person to register the trademark.
In other words, there could be an unregistered user out there that started using their trademark a long time ago that might not pop up in that Trademark Office database, but they’re still out there and they still have rights. This is one major purpose of a trademark search: to uncover users whose rights supersede yours.
So I hope that helps you better understand the reasoning behind that comprehensive trademark clearance search. Remember, you want to know:
- “Can I use this mark?”
- “Can I protect this mark?”
- “Can I register this mark?”