Trademark Searches of Design Marks
Trademark searches can be informative tools. Yesterday, Bruno Tarabichi from Trademark Sentinel wrote about the effectiveness of a client-performed trademark search. He noted, quite rightly, that clients often choose to do their own search instead of having one professionally run.
For word marks, clients can certainly perform their own searches. Design marks can be much more difficult to search, because they require nuanced selection of keywords, descriptions, and design codes. Inappropriate search keywords can lead a search astray and possibly miss relevant and similar marks.
A self-performed search – whether it is of a word or a design – creates a number of issues, however. It introduces an aspect of risk and liability that is not present when a professional search is used. It also likely limits the scope of the search, giving the client a much less clear picture of the registered and common-law trademark landscape.
How do these things happen? Well, the value in a search comes primarily from two things: the thoroughness of the search and the analysis of its results.
Regarding the former, a professional search will likely be more exhaustive and may key in on common ways that a word mark can be altered – ways that a client may not realize. This isn’t a ding on the client – searching is a skill like any other. It takes time and experience to develop. I can’t golf at all, so if I were betting my business’s brand on a golf shot, I’d be happy to hire Rory McIlroy to take a swing for me. A professional search will also include many more sources of information that a client can typically access. Beyond the USPTO records, professionals search state and local databases, online databases, phone records, and a variety of other resources that yield results not just on federally registered marks, but on common-law marks that may affect how the client’s mark can be used or expanded throughout the US.
With respect to the latter, analysis represents the attorney’s education and experience at your disposal. The attorney will give an opinion of registrability and will inform the client whether certain parts of the country present obstacles to expansion. If similar registered marks are found, the attorney can review the file history of the marks, see their status, and decide whether they pose real or substantial risks.
The risk of a self-performed search includes not only an underinclusive search, but also an incorrect analysis. Clients may err in their analysis in two important ways. First, they may feel that two marks that are legally similar aren’t that similar. This happens all the time and is problematic because the USPTO often doesn’t draw the fine distinctions between two marks that a client does. On the other hand, the client may feel that two marks that are legally different are similar, and may then falsely conclude that it can’t obtain a registration.
So, while I agree that a client can perform its own search, it should be aware that there will be inherent limitations in the search. One of the best reasons for having a professional search made is the ability to go back time and again and ask questions of the searcher when you are unsure about something. When you do a search yourself, that option isn’t there.