Given the ease of electronic access to USPTO data, many entrepreneurs take it upon themselves to conduct or have conducted a “basic” trademark search of the USPTO records prior to adopting or applying for a trademark. Few understand just how “basic” those searches are or the potential vulnerability created by reliance on the results.
Typically, those searchers enter a search term or phrase they are interested in registering. The result is usually a list of similar marks delivered with little context or ranking with regard to the use envisioned by the searcher, making it difficult to determine the relevancy of various marks. Although such a search may be adequate as a pre-screening tool that effectively identifies existing registrations that may immediately preclude use of the term searched, it does not provide a result that adequately discloses all potentially conflicting uses.
Conversely, a comprehensive search of the Federal trademark office records, state trademark records, common law and internet usage of a term or phrase will give the potential applicant a much better indication of the viability of seeking a trademark registration.
Assuming that the searcher has the knowledge, time and patience to review and understand each of the results, the job is still only half done. In most cases common law trademark rights can be obtained simply by being the first to use a trademark in commerce, rights that will often not be disclosed by a simple search of the Federal and State trademark office records. A majority of those common law users would be revealed if the searcher broadened the scope of the search to include common law sources such as state corporate records, business listing databases, trade journals, trade indexes and various Internet databases.
If the ultimate goal is to avoid conflicts with prior users and develop a strong brand name as one of a business’s most valuable assets, a comprehensive search of a trademark’s availability is the first and likely most important step.