Why Search Before Filing?
The United States Patent and Trademark Office (USPTO) and other global IP offices do not refund filling fees if an application is refused. More importantly, using a trademark that infringes on another party's rights can lead to costly rebranding, cease-and-desist letters, and litigation.
A proper clearance search is the insurance policy for any brand launch. It answers the critical question: "Are we free to use and register this mark?"
The "Knock-Out" Search
A "knock-out" or preliminary search is a quick check of the federal register. It is designed to eliminate obvious conflicts—exact matches or near-identical marks for the same goods.
- Scope: Usually limited to the USPTO database (TESS) or equivalent federal registers.
- Cost: Low cost, often done by the attorney or paralegal in-house.
- Goal: To spot "red lights" immediately. If you find an exact match, you stop and save the client money on a full search.
The Comprehensive Search
If a mark survives the knock-out round, a comprehensive search is recommended. This digs much deeper.
It typically includes:
- State Registrations: Trademarks registered at the state level.
- Common Law Sources: Business names, domain names, app store listings, and social media handles.
- Industry Publications: Trade journals and web searches to find unregistered (common law) users.
This search is crucial because in many jurisdictions (like the US), common law rights can pre-date and block a federal registration.
Analyzing Risk & Opinion Letters
Data without analysis is useless. The attorney's role is to interpret the search results. Is a similar mark in a related class a threat? Is the term descriptive?
Providing a clear Opinion Letter helps clients make business decisions. Risk is rarely black and white; it's a spectrum from "Very Low Risk" to "High Risk".
From Search to Docketing
Once a mark is cleared and filed, the journey is just beginning. The application must be tracked rigorously.
Tools like LexiDots seamlessly transition your cleared assets into a docketing workflow. By entering the filing date immediately, you ensure that the first round of examination deadlines—usually 3 to 6 months out—are already on your radar.