Basic and Comprehensive Trademark Searches
Santucci Priore, P.L. offers various types of trademark searches to suit most needs and budgets. We generally start the application process with at least a preliminary trademark availability search directed to the trademark for the applicable goods or services. Our search, analysis, and written letter summarizing the results of our search are designed to accomplish the following goals:
- • Evaluate the risk of potential liability from using the mark in United States and Florida commerce.
- • Evaluate the likelihood of one or more applications for registration of the mark being allowed by the United States Patent and Trademark Office (“USPTO”) or other authority.
- • Formulate a strategy for avoiding liability, protecting the mark, acquiring and maintaining trademark rights prosecuting one or more applications for registration.
Our firm offers a preliminary availability search of just the USPTO records for a minimal, mutually-agreed, one-time, advance flat fee. We also offer a more comprehensive search of the USPTO’s databases, the Florida Department of State’s database, certain international databases (seeking marks applied for or registered in the U.S.), domain name searches and searches of the two most used search engines, with written analysis and search summary for a mutually-agreed, one-time, advance flat fee. The more comprehensive search is designed to accomplish all three goals above. Our most comprehensive search includes all of the above plus the departments or secretaries of date of all fifty (50) states in the U.S., and includes far more common law (unregistered) uses.
With all but our most basic search, you will receive the following:
- Search Summary – An organized summary of the raw results of all trademarks, business names, domain names, “hits” and other relevant information revealed by the search tailored to your mark, for the goods and/or services you indicate.
- Search Results Letter – A well-reasoned analysis of the results by one of our experienced trademark attorneys.
- Attorney Consultation – Once the trademark results are in, and after you have had time to read and process the Search Summary and Search Results Letter, you are given the option to schedule a half-hour consultation with one of our experienced trademark attorneys to discuss the results and to formulate a strategy for moving forward.
The attorneys at Santucci Priore, P.L. not only file and prosecute trademark applications, we have extensive experience with litigating trademark matters worldwide in federal and state trial and appellate courts, the USPTO’s Trademark Trial and Appeal Board (“TTAB), and the trademark offices of various countries around the world. From this perspective, we can also confidently offer the services of trademark searching and rending of opinions on the potential for liability in initially adopting, or continuing to use a trademark from the time prior to when a problem arises, or after litigation is already threatened or has commenced.
If you would like to proceed with a search of your proposed mark, please fill out this one page form on our website at the following link: Federal Trademark Registration which will provide us with the information we need to get started. You can also pay the fee with a debit card or credit card on our website at this link PAY HERE if you prefer that method of payment. All trademark search and registration fees are paid in advance. You will just need to indicate whether you would like preliminary searches or more comprehensive searches, provide us with the trademarks and any associated logos and a detailed description of the goods and/or services sold in connection with each mark. Of course, we prefer meeting our clients in person when feasible for you. However, for your convenience and for the sake of expediency, all of the necessary information can be quickly submitted on our website at the above link if you choose.
Upon our receipt of the required information, and payment (note: all trademark search and registration fees are paid in advance), we will begin the search of your trademark. The length of time needed for each search varies depending on the complexity of the search, as well as the number and characteristics of any existing similar trademarks. We generally estimate two weeks for us to search and prepare a letter outlining the results of our search. Once we finalize and email a Search Result letter and Search Summary to you, and upon your review, we then schedule a consultation with one of our trademark attorneys to discuss the search and formulate the best plan of action. Please note that the cost of this consultation is included in the trademark search fee, and it can be conducted in person, telephonically, by Skype or other type of videoconference.
Our trademark search letter may cover some of the following “red flags” preventing the registration of a trademark. Please note that there could be numerous other potential issues as well, depending on the trademark:
Likelihood of Confusion
Pending Trademark Applications and/or Registered Trademarks
Our trademark search may disclose one or more pending trademark applications or registered trademarks, which could possibly challenge your use and application to register your mark with the Trademark Office, bar the registration of your trademark, and create liability on your part.
It is important to understand the standard for determining whether two marks could be in conflict with each other, thus, preventing a mark from federal registration and use. The fundamental question is whether the simultaneous use of two marks in commerce would create a “likelihood of confusion” in the marketplace. In other words, would it be likely for people to confuse the source of the goods or services in that one would believe the producer or manufacturer is somehow affiliated with the other? If the answer is yes, then the Trademark Office will refuse registration on that basis, while the owner of the other mark could potentially hold a claim for trademark infringement.
Common Law Uses
Similarly, our trademark search may disclose one or more common law uses, which, even if not registered with the Trademark Office (and therefore not considered by the USPTO in deciding whether to allow your federal registration of your mark), may still pose significant risks that are associated with registering your mark when there are other similar marks used in commerce, even when the other user has failed to apply for any registration. If any such users began using their marks first, they could likely have superior rights at common law, provided that your mark is found to be confusingly similar, or, you may have priority of use in the United States.
A trademark might not, by itself, be a strong mark in that it could be deemed “descriptive,” or even “generic” based on Section 2(e)(1) of the Trademark Act. It would be analogous to a brewery seeking registration of the term BEER. Inherent in trademark law is the policy of permitting competitors to make legitimate use of descriptive or generic terms to describe their products. Generic terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register or on the Supplemental Register. However, marks that are deemed “merely descriptive” can be registered on the Supplemental Register. Owners of registrations to the Supplemental Register can still use the ® symbol with their marks.
Please note, however, that when a generic term is combined with additional matter (wording, design), the USPTO may permit registration so long the generic term is disclaimed. A disclaimer states that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. A disclaimer of the generic term would confirm that you have no exclusive right to the term alone. Anyone is free to use non-protected generic marks without fear of liability.
The Trademark Office may deem a trademark or some of its components, in association with the goods or services described in the application, “merely descriptive” of a characteristic or function of the goods or services. Any resulting registration will ultimately be weak and more difficult to enforce against third parties using similar marks for similar products as compared to a less descriptive choice of marks. Anyone is free to use non-protected, unregistered, descriptive marks in a descriptive fashion without fear of liability. However, if you believe that protection of this mark provided you some sort of competitive advantage or other benefit, there is the option of seeking registration to the Supplemental Register if you were not able to prove that the mark has been acquired “secondary meaning” or “acquired distinctiveness” through extensive use and consumer recognition of the mark. Five (5) years of continuous use of a trademark creates a presumption of secondary meaning under United States trademark law.
Primarily Geographically Descriptive / Primarily Geographically Misdescriptive Marks
If a trademark consists of a geographic name or location, we might face some resistance from the USPTO in our attempts to register a trademark if it is deemed merely “geographically descriptive” or “deceptively misdescriptive.”
The Trademark Office may refuse to register a mark, when it believes that all of the following applies to a mark:
- • the primary significance of the mark is a generally known geographic location;
- • the services do not originate in the place identified in the mark;
- • purchasers would be likely to believe that the services originate in the geographic place identified in the mark; and
- • as to misdescriptiveness only: the misrepresentation is a material factor in the consumer’s decision to use the goods/services.
In such instance, the USPTO would issue an official Office Action after receiving your application asking us to state whether the mark has any geographic significance related to the goods or services you provide thereunder, whether the goods or services derive from or are manufactured in said location.
Please be aware that there are numerous other potential issues preventing the registration of a trademark. During our searching process, we do our best to find, analyze, and point out any such “red flags,” which in the end may: (1) estimate and limit any additional or otherwise unexpected costs of applying for a trademark registration or defending claims of trademark infringement, (2) minimize your liability, and (3) increase your chances of registration to whatever extent possible.
Our two comprehensive searches and examination of your mark are intended to identify and anticipate these possible problems before we file an application to register. They help us to maximize the success of any applications you ultimately decide to file, and to assist you in acquiring the broadest trademark rights possible.