Things every client should know about trademarks

Is performing a trademark search necessary?

It’s not legally required to perform any kind of trademark search prior to filing a trademark application, but many clients prefer commissioning one.

This is another example of an excellent topic to discuss with a trademark attorney at the outset of the engagement. The reason? There are actually numerous advantages and disadvantages to the performance of a trademark search, and different clients appraise these benefits and costs in different ways.

Examples of the advantages of performing a search potentially include: (a) a greater understanding of your ability to obtain a trademark based upon an understanding of the trademark applications and registrations currently on file; and (b) the reliability and speed with which such searches can be conducted (at least for word marks which are well-suited for both manual and computer-assisted searching).

Examples of the disadvantages of performing a search potentially include: (a) the cost associated with the commissioning of a professional trademark searcher; (b) the time spent analyzing the trademark applications and registrations uncovered (which delays somewhat the filing date of the application); and (c) the potential for uncovering third-party trademarks which may create a potential exposure for an alleged knowing, intentional, and / or willful infringement of those trademarks.

Bottom line: it is important to confer with a trademark attorney before conducting even casual searching (to say nothing of commissioning a professional trademark searcher), so that the decision to conduct a search is a fully informed one.