What is a Trademark Search?

Trademark search refers to any action taken for the purpose of determining whether and/or a trademark is used in commerce. Trademark searches can be narrow in scope or can include results from every avenue for trademark protection for every mark is remotely similar to the mark that is the subject of the search. An appropriate searching strategy will consider the nature of the mark, the nature of the goods/services the mark covers, the timeline for bringing the mark to commerce, and the applicant’s allocation of resources.

Trademark searches are generally classified as being either a “knock-out search” or a “full search.” Each type of search is explained below.

KNOCK-OUT SEARCH

A “knock-out” search refers to a search of the Federal Trademark Register to determine if the trademark in question is likely to fail in securing a trademark registration.

SCOPE OF KNOCK-OUT SEARCH

Knock-out searches cover all the marks on the Federal Register Trademark Electronic Search System database. This includes both applied-for marks that have not registered and registered marks. It also includes registered marks that have since been canceled and trademark applications that have been abandoned. This database will return identical or close matches for a trademark that includes the words in the mark in question.

A knock-out search typically only includes searches for the mark itself, and not close variations on the mark. For example, if the proposed mark was LAMP COMPANY, the searcher would look for results for “Lamp Company,” but not “Lamp Store” or “Lighting Company” even though these marks could come into conflict with Lamp Company due to their proximity in meaning.

PURPOSE OF KNOCK-OUT SEARCH

Knock-out searches provide the applicant with information about whether a trademark is so likely to fail in an application that it does not merit further searching or an application. Sometimes the knock-out search is all that is necessary to determine that a proposed mark is likely to conflict with a registered mark, and in those situations it is useful to rely on that knowledge rather than incurring additional costs to pursue the mark.

A knock-out search does not provide comprehensive results of a trademark’s availability. Therefore, a clear knock-out search cannot be relied on as a predictor of success at the application stage; nor can it assure the potential applicant that the mark is not an infringement risk.

While registering a Trademark one has to go through various stages to get it registered. Once the application is filed for registration, it is then examined by the examiner/registrar of trademark and if there is any mistake or any query, the examiner objects the application. All the objections by the examiner along with relevant trademark provisions are stated in Trademark Examination Report. When trademark status objected, you need to file a reply to the objection so as to clear examiner’s objections and get your trademark registered.

The reply to the Trademark objection should contain a report stating the reasons, facts, precedents and supporting evidence as to why the mark should be registered in favor of the applicant. The reply should be sent within one month from the date of receipt of the objection. If the Trademark Examiner finds the reply sufficient he then allows the application to move to the next stage i.e., publication in a journal.