David A. Burge Co., L.P.A.
PATENTING INVENTIONS
REGISTERING TRADEMARKS
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Seven Points to Understand
About Trademark Searches
The law presumes you have knowledge of the federally registered trademark rights of others, and imposes on you a duty to avoid infringing the rights of others when you select and begin using a new trademark. What this means is that you may have a duty to conduct a clearance search, and perhaps also to obtain an availability opinion from counsel supporting the adoption of the mark you want to use.

Conducting a clearance search to locate and take into account the active federal registrations and pending trademark applications of others is increasingly being viewed by the courts as a necessary prerequisite to your selecting and using new trademarks.

The use of trademark clearance searches and reliance on availability opinions from trademark professionals experienced in evaluating trademark searches has become a standard practice accepted and followed by practically every major company during the selection and introduction of new trademarks.

Failure by a newcomer to conduct a trademark search may entitle the owner of established trademark rights that are infringed by the newcomer to remedies such as injunctive relief, whereas conducting a search may provide the newcomer with something of a good faith shield that di­minishes liability if sued for infringement.

To determine whether a trademark is available for use and perhaps also for registration, a trademark attorney will examine whether marks owned by others that were discovered during a search are likely to cause confusion with the proposed new mark, taking into account such factors as the similarity of the marks and the commercial relation­ship between the goods and services identified by the marks. Finding a conflict does not require that the marks be identical, or that the goods and services be the same.

Because trademark searches rely on databases that are never completely up to date, and that never contain all pertinent information you might prefer them to contain, you always take a risk when you rely on the results of a search, and this is true regardless of how broad­ly, carefully or diligently the search was conducted.

Because trademarks can be formed from letters, words, names, slogans, numbers, symbols, designs, colors, sounds and other devices that serve to identify and distinguish the products and/or services of one entity from those of another, the costs involved in properly conducting trademark searches can differ widely depending at least in part on the character of the elements that comprise a trademark.
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Why Federally Register Your Trademarks

Federal registration provides advantages and presumptions that enhance the value of your mark, the degree to which your trademark rights are respected by others, and the ease with which you can enforce your trademark rights.

If you begin making use of your trademark in interstate commerce before you apply for a federal registration, you can file to regis­ter on an "actual use" basis -- which may help shorten the pendency of your application and diminish its prosecution costs.

If, on the other hand, you apply for federal registration on an "intent to use" basis, proof of actual use of the mark in commerce will need to be provided to the USPTO before a certificate of registration can issue.

When a registration issues, it will have a term of 10 years, and can be renewed for additional terms of 10 years if lawful use of the mark by the owner or by a licensee continues.

Between the 5th and 6th years of the initial 10-year term of a federal registration, evidence of continued use of the registered mark must be supplied to the USPTO to keep the registration in force for the balance of its initial term.

   

© 2008 David A. Burge Co., L.P.A.