CAN I GET A COMPREHENSIVE TRADEMARK SEARCH?
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Absolutely! This is critical and we highly recommend this level of search before any trademark application is made. Many people believe that they have performed an adequate trademark search simply by performing a "knock out" search using the TEAS search tool and looking for matches. Unfortunately this will only find "exact matches" and is not sufficient as a useful trademark search. Because the USPTO is concerned with the existence of same or similar marks in the same or similar types of business, goods and services, a comprehensive search, as is the case of the type we perform, must look far beyond just the exact matches.
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Your comprehensive search results are analyzed by a licensed attorney, before we provide an opinion on moving forward with a trademark filing.
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The comprehensive search includes careful searches of the following: federal trademark registry, websites, social media, state registries, various business databases, and common law trademarks. In most cases, you will receive your comprehensive search report by email within 10 business days after we receive your intake form information.
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Many people wonder if a quick internet search or scan of the USPTO trademark lookup site for similar trademarks is enough to adequately assess the probability that their mark will conflict with others in the marketplace. This sort of search is known as a "knock-out" search. In virtually all cases, this level of search is not advised and will not adequately be able to ascertain whether or not filing for a particular mark is risky. These searches generally only find exact or near-exact matches and also generally only find already registered trademarks. Generally, because of this, our firm will not perform knock-out searches for clients. Because virtually all identified conflicts and infringement cases involve marks that are only somewhat similar, but not at all the same, it is never recommended that much confidence, if any at all, can be gained by a knock-out search.
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The search is a predictive tool. Your search result will be summarized in a customized attorney opinion letter assessing how likely it is that your trademark application will be met with an office action by the USPTO examining attorney. We do this by assigning a risk factor to your potential application. A "high risk" application is one that we feel has significant impediments and thus will likely be met by at least one substantive office action that will be difficult to overcome, meaning it is unlikely that your trademark can be registered in the federal database. A "low risk" application is one where we believe that no significant impediments exist and that the application should have little issue being approved. Most applications are rated as "medium risk." These are those applications where we believe impediments may exist, but that they more likely than not can be overcome by a solid response to the substantive office action if one were to be filed by the USPTO. (Please note that the legal fees to prepare an office action response are not included in the base application legal fees and will require additional payment.)
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The attorney opinion letter is a 3-10 page report that discusses the impediments or objections that we feel will likely be raised by the USPTO if you were to file a trademark application. In addition to potential conflicts of similar registered or pending trademarks, your opinion letter will also discuss any other likely objections, such as, but not limited to the situation where your potential trademark is merely descriptive, offensive, or other reasons why a trademark cannot be registered at the federal level.
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Your opinion letter is a vital tool to decide whether or not to move forward with the actual application. In the case of a "high risk" application, it may be advisable to find another trademark rather than spend the time (trademark applications generally take 14-18 months from start to finish) and money (all fees paid are non-refundable once application is made) only to find out that your trademark cannot be registered due to the already identified risks in your opinion letter. Of course, at the end of the day, it is entirely your business decision whether or not to move forward with the application phase despite the risks outlined in your opinion letter.
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While the comprehensive search is a valuable predictive tool, it is never a guarantee of application success. The final say as to what impediments or objections exist and whether they can be overcome lie exclusively in the hands of the USPTO attorneys. The Law Offices of Michael Rada can never provide a guarantee that your trademark will register regardless of the level of risk we assess. It is entirely your decision whether or not to move forward with an application regardless of the type of search that is performed.
