Should you conduct a Trademark search and if so, when?

There are many reasons to conduct a search of a potential trademark, but the two most significant are to better ensure availability of the registration of the mark before adoption and to help avoid unintended infringement of another’s mark. In addition, a worldwide trademark search is often helpful to ensure that a mark is available for use as a domain name when a company’s website is intended to have broad, international exposure. The timing of the search will depend on your particular circumstances, but for the most part, a search can never be done too early in the process of developing a product or business.

What is a Trademark Search?

The search can be as simple as taking the time to see if the proposed mark is being used on the Internet. Even the most basic search using an Internet search engine will provide you with a great deal of information concerning the use of the mark in commerce. Is anyone using such a mark? If so, are they using the mark for a similar good or service? You will probably be able to find that out, and likely much more, from even this most simple of searches.

A more focused search conducted by a trained trademark searching company or attorney may be advisable as well. When you or your company are ready to go to market or are already in the marketplace using a trademark, it is usually advisable to see who else may be using that mark before attempting to register it. Having some confidence that a mark is available may provide you with the added impetus to go ahead with an application for registration and thus secure your company's ownership of that mark before others have the opportunity. Likewise, a formal search may illustrate to you that others have already been using the mark (or similar marks) in your field of goods or services. This knowledge may prompt you to modify or change your mark before you become too invested in its use, or to narrow the use of the mark to specific goods or services in order to avoid conflicts with others.

For individuals and companies needing the greatest degree of certainty and/or awareness of potential competitors use of the same or similar marks, a full professional search may be sought by a dedicated searching entity such as Cardinal IP. Such a search can be ordered directly from Cardinal IP without having to engage a trademark attorney. Alternatively, a trademark attorney can determine the appropriate scope of the search, order the search, and then analyze the results and provide you with an opinion as to the availability of your trademark. We routinely provide such availability opinions on behalf of our clients.

What is the Cost of a Trademark Search?

The cost of a search can vary greatly. Obviously, a basic self-conducted, “let's see what we can find on the internet” type search costs only your time. At Forsgren Fisher McCalmont DeMarea Tysver, we typically will spend roughly 1-2 hours in a more directed trademark availability search at a cost of $425-$850. A detailed third-party search may cost from seven hundred to several thousands of dollars, depending on the geographic scope (e.g., a mark used just in the United States will cost less to search than a mark used to 3-4 countries or a mark that is used worldwide), the nature of the mark, and the associated goods/services. An international clearance search will be far more expensive than a preliminary style search, ranging in cost from a few thousand dollars to more than ten thousand dollars.

Should you Conduct a Trademark Search?

Yes, you should conduct a trademark search. While a search is an additional expense over and above that associated with preparing and filing an application for registration, it is an expense that often saves the client significantly in the long run. The search is frequently an eye-opening experience by illustrating the current and past uses of a proposed mark by others, as well as occasionally providing at least a glimpse of potential competitors in a given market. We recommend that you conduct a trademark search before filing an application to federally register the mark. In fact, it is preferred to conduct a trademark search as soon as you have an idea for a product or business name that you think might have current or future economic value.

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This guidance is provided by the attorneys of Forsgren Fisher McCalmont DeMarea Tysver. Please contact us if you need help protecting your intellectual property. The legal information provided in this guidance should be distinguished from actual legal advice. Please see the Guidance index page for more information.