Trademark Searches & Opinions

Trademark searches help you assess the originality of an element of your branding: a logo, business name, product name, symbol, slogan or any other trademark-eligible asset. This type of action goes a long way to ensuring that you do not infringe upon the earlier rights of any other party — even inadvertently, which is more likely if you are using an unregistered trademark.

Thus, conducting a trademark availability search is a critical pre-filing step. If you determine that your would-be trademark registration is identical or overly similar to an existing trademark, you will have a chance to revise your branding or plan preemptive measures to defend your new brand from potentially similar prior rights. In the meantime, you will have saved the time, resources and fees of filing a failed application.

Trademark searching is essential to anticipate possible legal action leveled against your trademarks. Even if a search indicates your mark is sufficiently original and potentially available, oppositions or trademark infringement claims are not out of the question. Conducting a search provides an overview of the risks and offers an opportunity to minimize them, plan ahead and reach a positive outcome.

Public trademark databases can be the start of your search. Of the public options, your best choice is one with an international reach, such as the Global Brand Database maintained by the World Intellectual Property Organization (WIPO).

This search will not access every trademark in the world, but 130 countries participate in the WIPO's Madrid System, so many trademark filers use it to supplement their domestic registrations. The Global Brand Database allows you to view key details of every mark with a Madrid registration, along with separate entries for registrations in local jurisdictions.

Although these sources may give a preliminary outlook, they are usually insufficient and could be misleading in terms of accurate trademark statuses.

It is always better to get the assistance of a professional. Public search options do not guarantee the comprehensive results you need to help ensure the originality of your trademark or service mark.

Also, trademark database entries may not include all the information you need to determine your mark's infringement potential correctly. Levels of detail can vary considerably, especially if digging into older trademarks that have been repeatedly renewed. Moreover, combing through search results pages is simply not an efficient process for an organization of significant size, especially if you plan to file a trademark portfolio in bulk or submit applications across numerous jurisdictions.

By contrast, a trademark attorney from a dedicated, globe-spanning firm like Dennemeyer & Associates will conduct the searches that most effectively serve your needs. They know exactly which tools to use to look for existing marks with any similarity to yours, including those you cannot readily access.

Much like their counterparts in the patent world, trademark opinions are nuanced and expert assessments that gauge a trademark's viability for the filing, examination and registration process.

Why should you also request a trademark opinion when you retain trademark search services?

The counsel and expertise offered in a trademark opinion are critical supplements to the results of a search. The degree of similarity or dissimilarity might not be readily apparent at first glance, nor will a filing's chances of overcoming potential opposition be revealed by a search alone. An experienced trademark specialist will be able to provide these much-needed insights to guide your trademarking decisions.

What are the key elements of an effective trademark opinion?

In addition to describing any prior asset in conflict with your own, an opinion from an experienced trademark attorney will include strategic advice.

This is extremely valuable when issues of similarity and originality are not black and white. For example, an opinion might confirm your would-be mark is dissimilar enough from existing trademarks while also noting that a relevant third party is overzealous in filing oppositions and lawsuits. Or it might state that the trademark office in your home jurisdiction would likely register the mark, but offices in other regions you hope to target are more strict or have different eligibility criteria. All in all, trademark opinions offer valuable perspectives when applicants need them most.

If your mark is identical or nearly identical to a registered trademark covering the same goods and services, you must modify it or start working from scratch on a new trademark. If it has some similarities to an existing mark but not enough that infringement is a certainty, things are more complex.

What should you do if your trademark is somewhat similar to another?

Seek the counsel of your trademark lawyer. They will be able to assess whether it is worth pressing forward with an application and explain how easy (or difficult) the way forward will be. In many cases, your counsel will advise revising the mark rather than risk rejection or legal action, but they will assess the situation thoroughly before drawing any conclusions.

What will you need to prove if your trademark is contested?

Once your mark passes muster with examiners, it is published in the office journal to allow third-party oppositions to be filed. If an opposition is filed during this window (usually lasting one to three months), the burden of proof rests with the opposing party. Most often, they will need to present convincing "relative grounds" for refusal, namely, proving the likelihood of confusion with their earlier trademark and their own commercial enterprise. They can also object on "absolute grounds." These vary by jurisdiction but may include mere descriptiveness, use of a surname, deceptiveness, improper classification of goods or services, morally objectionable content and errors in the application.

All of the above could also be reasons for post-registration legal actions against you. In both lawsuits and oppositions, you must prove the contesting party wrong, and successfully going through examination or registration will be a strong argument in your favor.

A trademark lawyer from Dennemeyer & Associates can argue against an opposition or lawsuit using a comprehensive understanding of local law and procedures. Our attorneys have experience in front of appeal boards and courts for all manner of actions, tackling cases of every size and complexity.

Success in any dispute is built upon a foundation of compliance and good practice before the start of proceedings. Even if you need to bring in a Dennemeyer lawyer after a complaint has already been lodged, their skill and knowledge will be indispensable to achieving the best possible resolution.