Published in the Union Leader (3/18/19)
Question: I am in the process of developing a trademark for my brand. I have been told that the cost of conducting a preliminary screening or knockout search and the cost for filing a trademark application with the USPTO are often about the same. Should I skip the search and go straight to an application?
Answer: Although it’s not legally required that you conduct any level of searching before you file a trademark application with the U.S. Patent and Trademark Office (USPTO), it’s prudent that you do. While engaging a trademark attorney to conduct a screening search may indeed approach or exceed the filing fees for a U.S. federal application, a screening search often provides invaluable insight and may save you significantly more money and headaches down the road.
A “screening” or “knockout” level search typically refers to an initial search aimed at identifying marks that are identical or highly similar to the mark in question. In a screening search, the objective is to get an idea of marks that have a greater risk of likelihood of confusion with your mark, which might be raised, for example, by way of a refusal issued by a USPTO examining attorney or in some form of conflict with a third party, such as a formal opposition to your application or a cease and desist letter.
The results of the search may guide your strategy for moving forward, whether you find that you’re comfortable with the apparent level of risk or ultimately decide to move in a different direction. On the other hand, if you move straight to filing an application, you may face barriers at a few different points in the process including, as mentioned, via a refusal issued by an examining attorney or via an opposition at the Trademark Trial and Appeal Board. At that point, you face the added expense of dealing with those obstacles unprepared or perhaps having to start over with a new application.
Even if you are not interested in filing an application for registration, it’s beneficial to have a sense of the landscape of the marks/registrations that are the same or similar to yours. After a few years of building your brand, you may attract the attention of a third party that has a registration pre-dating your use of the mark.
Being put into a position to unexpectedly invest resources to investigate the matter, develop a response strategy, and/or rebrand is often a stressful process and an even greater hit to your budget. If you’re able to devote some resources to thoroughly search (and, ideally, protect) your mark upfront, you will be much more likely to be able to avoid bigger problems down the road.
An experienced trademark attorney can help you with your search strategy and provide an opinion regarding your mark’s availability for use and registration.
Cathi Yao can be reached at [email protected]
Know the Law is a bi-weekly column sponsored by McLane Middleton, Professional Association. We invite your questions of business law. Questions and ideas for future columns should be addressed to: McLane Middleton, 900 Elm Street, Manchester, NH 03101 or emailed to [email protected]. Know the Law provides general legal information, not legal advice. We recommend that you consult a lawyer for guidance specific to your particular situation.