Knockout searches are searches run before filing a trademark application to assess,
primarily, the viability of obtaining a registration on that trademark. Whether you can use the mark is actually a slightly different question from whether you can register it, but a knockout search will reveal some information about the use possibilities. A knockout search is usually a recommended step before filing a trademark application.
There is no requirement that any sort of search be completed prior to a trademark application filing. Many clients forego them. However, the Trademark Office will always run a search – and so clients who skip this first step run the risk that their applications will be rejected by a similar mark that the Office pulls up in its search.
The knockout search reduces this risk. Knockout searches are usually a few hundred dollars or less, compared to the thousand-plus dollar cost of a trademark application. This is money well spent when the search reveals a conflicting mark has already been registered. It gives you the ability to decide whether to proceed forward with knowledge of that risk or to change your mark to avoid it.
When we conduct a knock-out search, we perform it on the federal database, including both the Principal and Supplemental Registers at the Trademark Office. This therefore covers every single mark that could ever be cited against your mark once you submit an application. We used to develop and run each search manually, querying the federal database directly. Now, we also run our searches through a piece of proprietary software which performs an AI-based search of the federal database. With this two-pronged approach, we have found we can provide more accurate results and better predictability to our clients. To that point, in the almost three years since we adopted the two-pronged approach, and for those applications that we ran pre-filing searches, only one was rejected in light of a mark that the Trademark Office found in its search.
Any knockout search should not only deliver a set of raw results – the potentially-conflicting trademark registrations – but should also be a report containing analysis. You hire an attorney not to run a search but for his or legal advice. Trademarks receive rejections if they are too similar to another mark; this question of “similarity” is based not just on the marks themselves, but a number of other factors that a trademark attorney should be experienced in recognizing and evaluating. Therefore, any knockout search should review those factors. In our searches, we provide the most relevant results as well as a determination of registrability, identifying the level of risk of a rejection based on those results.
Some firms only search word elements – trademarks that contain nothing but words. Searching marks that contain design elements, or that are solely composed of design elements without any words, is more difficult. However, there are advanced searching features on TESS (the Trademark Office’s search interface) which allow you to search by design element or design code. We exploit those advanced features, and our software also allows us to search design marks.
Trademark knockout searches are not comprehensive searches. A comprehensive search usually looks for similar marks at the Trademark Office, just as the knockout search does, but then goes further by looking through business name registrations, phone number databases, internet domain names, common law usage. Clients run comprehensive trademark searches if they are concerned with the potential for infringement, if they need to review foreign trademark databases, or if they believe they will expand their business quickly into many locations across the nation.
Knockout searches are also different from direct searches. A direct search covers essentially only the mark itself. This is often the sort of search that a client runs on its own; if so, clients can sometimes mistakenly believe that their marks can be registered because the direct search didn’t return any results. However, ignorance is not bliss – the direct search does not replicate the search the Trademark Office runs, and so it is not an accurate predictor of the likelihood a mark will register. Only a knockout search will do this.