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Wolfe Legal Services P.L.C.

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Conducting Comprehensive Trademark Searches

In this article, you can discover…

– How an attorney can assist with trademarks.
– When to call an attorney and why it’s so important.
– What to do when there is a discrepancy with your trademark.

What Areas Are Assessed When Conducting A Top Ranked Trademark Search?

The following areas are assessed by trademark attorneys:

  • The distinctiveness of the mark
  • The strength of the mark on a standardized scale
  • The likelihood that the trademark will be confused with another
  • Potential issues with the trademark in its intended area of commerce
  • The way the client is using the mark and how they plan to use it

Trademarks can be subjective; however, experienced trademark attorneys are able to confidently advise their clients on these matters. This way, any issues that arise during the assessment, (such as lack of validity or possible dilution claims), will be addressed. Even better, this can be done prior to the completion of the application for registration of the trademark.

What Resources Are Used When Conducting A Trademark Clearance Search?

Wolfe Legal Services uses a wealth of knowledge and experience along with trademark searching software, the USPTO database, the World Intellectual Property Office database, and a general internet search through social media and general search engines.

How Thorough Are Trademark Clearance Searches?

The trademark search software used by Wolfe Legal Services has a component that checks already employed trademarks for spelling variation and foreign language and phonetic equivalents. The software analyzes the information and provides comprehensive results.

Then, a secondary search is conducted through all of the phonetic possibilities that sometimes even the software does not see, though it is a rarity. In addition, the results of the search include the trademark with or without articles (like “a” or “the”) attached to it.

Is A New Search Necessary If A Significant Amount Of Time Has Passed Between The Initial Search And Proceeding With The Trademark Registration Process?

It is unlikely that a new search is necessary when there is a lapse of time between the initial search and the trademark registration process; nevertheless, our firm conducts a secondary search to confirm.

What Happens If A Search Reveals A Similarity To The Desired Mark?

When a mark is determined to be similar to a preexisting one, the next steps depend on the following factors:

  • How similar the mark is;
  • Why it is similar;
  • What overall commercial impression the mark puts forward;
  • What other services the mark was being used for;
  • And more…

In total, there are 12 factors for likelihood of confusion that must be evaluated on a case-by-case basis.

If you find that your mark is similar but not identical to another, it is a good time to consult an attorney.

Do We Still Need To Hire A Trademark Attorney To Conduct A Deeper Search After Completing A Search On Our Own Without Finding Any Potential Conflicts?

Unless you understand everything there is to know about the likelihood of confusion in trademarks, hiring a trademark attorney is always a good idea. Because there are so many brands and different variations on phonetics among other discrepancies, a lawyer is the best way to ensure that it is safe to proceed.

Is It Too Late To Hire Your Firm To Avoid Trademark Infringement If A Trademarked Product Was Entered Into Distribution Channels Without A Proper Trademark Clearance Search?

After failing to conduct a proper trademark clearance search and entering the product into distribution channels, it is still advised, and even more critical, to hire a trademark attorney.

You are still eligible to get a registration because your product is in use; even so, you are at an increased risk for potential infringement. If our firm becomes privy to a potential lawsuit against you, we will inform you and prepare as needed.

Obviously, it is more beneficial to conduct a search before launching a product. At the very least, having some searches done can be a saving grace because once the product is being used in the marketplace, the possibility of litigation is much more detrimental.

Which Trademark Registration Is The Most Important?

The most important registration is the federal USPTO registration because it is substantively examined.

For more information on Comprehensive Federal & State Trademark Searches, a free initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 784-9372 today.

Steven Wolfe , Esq.

Call For A Free Consultation (615) 784-9372

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