One of the most critical steps in selecting a trademark for use and registration is the trademark search. Often times this step goes overlooked or is underestimated because easily available searches conducted over the Internet may provide clients with the false sense of security that their proposed trademark is available.
This may be compounded if an individual navigates the United States Patent and Trademark Office’s website and after “conduct(ing) their own trademark search” concludes that the mark is available. An individual may mistakenly search only for the exact mark sought and rely on that result to their detriment.
Conducting of a proper trademark search is an art only fully understood after extensive interaction with the Trademark Office’s application process. Finding (or not finding) exact matches is only the beginning of the search process, rather than the end. Prior existing registered and pending trademarks capable of interfering with a newly proposed trademark are also those deemed to be “confusingly similar.” The Trademark Office will conduct its own search upon examination of the trademark application and will convey its findings within 5-6 months after the application is submitted. In some cases, this time frame is acceptable to learn whether or not a new trademark is viable. However, in other cases, where mass-production of a product is eminent, or the launch date of a service industry is looming, a prior trademark search is beneficial so as to learn the viability of a mark before the Trademark Office conveys its findings.
Our attorneys are experienced in providing the trademark owner with a written legal opinion setting forth reasons why a given proposed mark is viable. With a written legal opinion letter as part of your trademark-launch due-diligence, it is more difficult for you to be labeled a “willful infringer,” in the event of a challenge by another trademark owner. Demonstrating that an infringer is “willful” aids in a challenger obtaining an award of increased damages and reimbursement of attorney fees.
McHale | Slavin has successfully prosecuted thousands of trademarks before the United States Patent and Trademark Office. Our firm understands with the intricacies of trademark practice. Contact us for additional information or to schedule a consultation.
