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Trademark Searches – FAQ

DO I NEED A TRADEMARK SEARCH?

In the United States, there is NO legal or regulatory requirement that you perform a trademark search or conduct any sort of due diligence before filing a trademark application.

A trademark search is optional – not required.

Whether or not you need a search depends on your personal risk tolerance level.

A search can allow you to choose a less defective or problematic brand before you invest into it.

After you file a trademark application, it can take 6-9 months for a USPTO Examining Attorney to review your application. Once they review it, they may allow it to move forward OR they may issue an Office Action (an initial refusal).

The majority of applications (over 70%) receive an Office Action.

An Office Action does not mean your application is doomed! In fact, most refusals can be overcome, especially with the right attorney. Ana Law’s sucess rate at defeating Office Actions issued by the USPTO is 100% and our sucess rate with Office Actions globally is over 95%.

However… the arguments that are required to overcome Office Actions can be complex. Responding to an Office Action comes with an increased cost. Thus, Office Actions should be avoided if possible.

The earlier you can adjust your brand or choose an alternate name, the less expensive it will be to push your trademark through or re-brand.

A proper trademark search can uncover issues and analyze your desired brand name, logo, or slogan so that we can strategically prepare your application in a way that avoids many common reasons for Office Actions.

CAN I DO A TRADEMARK SEARCH MYSELF?

No.

Only an experienced trademark attorney can conduct a proper trademark search.

You can and should do background research before speaking with your lawyer.

On a daily basis we conduct searches and simply tell people what is on the first page of google.

However, searching on google or the USPTO TESS database alone is not a trademark search. Different Classes, goods/services, channels of trade, etc. all need to be searched and taken into account when making a legal determination as to the risks and defects of a brand name.

IS SEARCHING ON USPTO'S TESS DATABASE A TRADEMARK SEARCH?

No.

The USPTO Trademark Electronic Search System (TESS) is a helpful tool. However, TESS is extremely limited. The current AI software for trademark searches which is currently on the market offers a MUCH more accurate search.

The attorneys and staff at Ana Law Group use our Corsearch software subscription.

One problem with TESS is that you may find the name you want is already listed… However, you can get a trademark that is the same as another company’s name in many cases.

For example:

  • Dove Chocolates & Dove Soap
  • Delta Airlines & Delta Faucets

Whether you can use a name that is already trademarked is a case-by-case determination that requires legal analysis to answer.

Another problem with TESS is that you will not uncover every brand that may be problematic unless you know the correct visual/phonetic manipulations & variations to search.

For example, you can search “STARBUCKS” and receive 100+ results.

You can search “STARBUCKSS” with an extra “S” and receive ZERO hits.

This does NOT mean the USPTO will allow you to trademark STARBUCKSS with an extra S.

WHAT ARE THE DIFFERENT TYPES OF SEARCHES?

Knockout Search

  • Manual attorney search on the USPTO database (TESS) for your exact mark
  • No variations are searched
  • No results summary

Full Search

  • AI Search of phonetic and visual variations of your mark
  • Search of all 50 State LLC databases
  • Search of Amazon, OpenSeas, social media, internet search databases
  • Analysis of all Attorneys of Record of prior/conflicting mark owners to analyze their litigation history
  • Advisement on potential genericness, descriptiveness, disclaimer, and translation issues
  • Clearance and availability opinion
  • Legal memorandum of our results

HOW LONG DOES A TRADEMARK SEARCH TAKE?

Knockout searches can be done in under 48 hours, often on the same day if our attorneys have availability.

Full searches take 5-10 business days for us to prepare and draft our report.

More info about the differences between the searches on the next pages.

HOW MANY TRADEMARK CLASSES (CATEGORIES) DO I NEED?

Please see our Trademark Class Guide for more information. It is also available at analaw.com/trademark-class.

WHAT IF TRADEMARK SEARCH SHOWS SOMEONE ELSE HAS THE NAME I WANT?

We may still be able to get the trademark, even if someone else has an application for it.

If the prior mark has a defect, we can cancel it. This is easier to do if the trademark applicant did not use an attorney (as pro se applicants tend to make more administrative mistakes and have weaker trademarks).

Even if we cannot cancel the prior mark, you may still be able to get trademark the same name as someone else.

It is also possible for exactly the same marks to co-exist.

Trademarks can coexist in different industries, but there is A LOT of gray area. Every situation is unique – and this can work in you favor if you have a strategic attorney.

Some examples:

  • Dove Soap & Dove Chocolate
  • Delta Airlines & Delta Faucets

These trademarks exist in different Trademark Classes. Classes are international trademark categories.

However, sometimes marks in different Classes can be too similar.

For example, athletic wear (specifically: shape wear) in Class 25 may be considered similar to Medical devices (specifically: maternity belts) in Class 10.

This does not mean we cannot defeat an Office Action that is based on this type of refusal. It just means that we may have to file a Response and/or Appeal brief with strong arguments that explain the goods/services are not confusingly similar.

 

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