Pros and Cons for Making a Trademark Search Prior to Filing a Trademark Application
Conducting a trademark search prior to filing a trademark application can be beneficial in a number of ways:
- A trademark search of a country trademark register can help identify any existing trademarks that may be confusingly similar to the one you are considering using, which can help you avoid infringement issues and the possibility of your application being rejected by a trademark examiner.
- A trademark search can help you to identify any potential legal risks or challenges that may arise when trying to register your trademark such as may occur in a third party Opposition to the trademark application.
- A trademark search can help you to determine how distinctive your trademark is from trademarks on the trademark register so you can decide whether to proceed with filing the application, or to make changes to the trademark and/or adopt a different trademark that is more unique (distinctive).
- The application to registration process can take more than a year and the search helps to identify potential risks from registered trademarks should you want to adopt and use the trademark prior to obtaining a registration.
- Conducting a trademark search can be time-consuming and add expense to the process.
- Even with a comprehensive search, it is not guaranteed that every similar mark will be found, and it is possible to miss a similar mark that may pose problems in the future.
- The results of a trademark search are not always clear-cut, and it can be difficult to determine whether a mark is too similar to an existing mark to be registrable.
- A quick search of the trademark made by an individual through an Internet search engine may provide a quick and inexpensive way to seeing who and where the trademark is potentially in use and may result in a decision to not adopt the trademark.
In conclusion, while conducting a trademark search of a country trademark register prior to filing an application in that country can be beneficial, it is not always a guarantee of a successful registration or that all similar marks will be found. At the least, the individual or company should make a search of the Internet before making a decision to proceed with a trademark search and/or application. Ultimately, it is up to the individual or company to weigh the pros and cons and make a decision based on their specific situation.
The foregoing is provided for information purposes only and is not intended to be used as trademark legal advice.