• Baroody Law

USPTO Trademark Search: Is a knockout search enough?

Updated: Jul 29, 2021

One of the most common questions I receive related to word trademarks is, "Why was my trademark refused, I did a USPTO trademark search and there was not any conflicting trademarks?"

A USPTO Trademark Search can be deceiving if you are new to registering a trademark, protecting your brand name, and/or starting a business. You will often see a quick USPTO Trademark Search listed as a knockout search. This type of search may differ from attorney to attorney, but generally, it is to knockout direct matches to the proposed trademark. But is this enough? If the word is made up, extremely unique, then a knockout may be sufficient, but it is still not advised to be the only method of clearing your mark prior to filing or using the mark in commerce.

In fact, I would not even recommend the starting point being a USPTO Trademark Search. That's right, I am going there. The best place to start your search is a fancy tool called Google. See, even if you go and find there is no direct USPTO Trademark or go a step further and have an extensive and expensive search performed to determine there is not a similar match either in the USPTO database, issues can still arise in the future from common law trademark holders. Yes, I am digressing from the discussion around a refusal because this is much bigger. You may be thinking, "How can you have trademark rights if you do not register your trademark?"

This can get confusing relatively fast, but in the same way you earn a copyright the moment you create a certain work of literature or writing lyrics to a song, you can acquire a common law trademark by using the trademark in commerce for specific goods and services in the same way it is required to register a trademark under 1 (a) status.

So, you have performed a USPTO Trademark search, there is no direct match, and you register a trademark. For the purposes of this example, we will call it ABCDEFG 2 for a soda brand that you are starting in the District of Columbia but intend to expand. Well, little did you know, another company has been using ABCDEFG for their soda brand in the District of Columbia for ten years but has never filed to register their trademark with the USPTO. You move forward, register your trademark, and receive a nice certificate letting you know that the wait was worthwhile, meaning you can use the R with a circle around it moving forward. Unfortunately, the competing soda brand company would have grounds to file an action with the Trademark Trial and Appeal Board to cancel your trademark registration. I would say they have a pretty good case too based upon this example. So, even after registering your trademark, a common law owner of a similar or the same trademark could cause you to lose your registration not to mention take you to court for damages.

Would a USPTO Trademark Search have covered the common law example above? No. This is why due diligence should always be utilized in registering a trademark. Moving fast is not always the best way to avoid trouble down the road. There are many excellent attorneys, yes my competitors are very good too, and you should consider using someone who knows what they are doing before you invest in using your trademark and registering the mark. The last thing you want and need is to register the mark, use it for six months, and find out an action has been taken against you to cancel the mark. Then, you may have to rebrand.

Knocking it out in a simple USPTO Search is not always a home run. While a knockout search or a deep search to determine if any similarities also exist in the USPTO database could help you successfully register the mark. However, thorough searching across multiple platforms is the only true way to ensure you not only have the ability to register it at the USPTO with a lower chance of refusal, but that you also have the ability to register the mark with the peace of mind that a common law trademark does not appear to exist which could jeopardize your registration.

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