Why a Common Law Trademark Search is Important

Every trademark application service order includes a search of the U.S. Federal Trademark database for registered and pending trademark applications. However, you should consider a "common law" search for most trademark applications to reduce the risk of future legal problems, which is included in the Autopilot package or can be purchased as a stand-alone service.

To sum up the value of a common law search in a single paragraph, here’s a quote directly from the U.S. Patent and Trademark Office (USPTO) :

While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application.  Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered.  Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark.

From the USPTO’s “What a Private Attorney Could Do to Help Avoid Potential Pitfalls.”

To unpack these ideas a little more, keep reading.

1. You Risk Investing in Building A Brand That You May Lose in the Future

Trademark law operates on both the federal level and the state level (each of the 50 states have their own trademark statues and case law that have developed over the years). Trademark rights at the state level emerge out of just opening up a business and advertising.

When you apply for a federal trademark, you’re seeking nationwide, exclusive rights to your mark. However, the USPTO only searches the federal database for similar trademarks – so it’s entirely possible to federally register a trademark that you do not have rights to and this can lead to disastrous results.

For example, let’s imagine you just started SUPER SUDS, a new artisan soap company, in sunny California. You took a quick look at the federal database, found no other trademarks with the same name, sent the USPTO an application, and in a few months your mark went onto register without an issue. Trademark secured, you moved on with your life.

In the meantime, a few years have gone by, you’ve built an awesome website at supersuds.com, you have few hundred thousand repeat customers all over the country, 3rd party retail distribution, and you’re spending substantial sums on advertising, month after month to get your brand out there. It’s all working as people are noticing, the phone is ringing off the hook with orders, and your business was just written up favorably in a lifestyle article in the New York Times. You’re thinking of hiring more employees to keep up with demand.

Then you get a certified letter in the mail from a very large, very expensive law firm. Their client, SUPER SUDZ, a two-person soap company that only sells soap from their single, tiny store in downtown Burlington, Vermont saw your great write up in the New York Times. They’re not too pleased you stole their name. They did some digging around and it turns out they were in business for a full 8 years before you. Alleging violations of Vermont state trademark law, based on the fact they had started using the mark earlier than you, they are demanding that you immediately cease selling soap under the SUPER SUDS brand or they’re taking you to court for trademark infringement.

Thus you’re now faced with the decision of either changing your name, losing years of brand equity, and seriously confusing your repeat customer base or spending tens of thousands of dollars litigating the issue or holding onto the hope that SUPER SUDZ might be open to some sort of reasonable settlement.

Having never applied for a federal trademark, SUPER SUDZ did not appear in your quick trademark search of the USPTO database. You had no way of knowing that they existed. If only you had spent a few extra dollars on a common law trademark search when you had the chance.

2. A Trademark Search Report Will Help Protect You If You’re Sued for Trademark Infringement

If you’re ever sued for trademark infringement, you do not want to be in a position where the other side is able to successfully argue that you knowingly infringed upon their mark. A trademark search report is objective evidence that you did everything in your power to ensure that your mark was available for nationwide registration and that your adoption of the mark was reasonable. Without a search report, a skilled attorney is going to argue that you willfully disregarded their client’s trademark rights and forged onward with no regard to the law. Besides having to find a new trademark and the disruption that will bring to an ongoing business, knowing infringers tend to be on the hook for attorney’s fees (theirs and the other party’s), court costs, profits from the infringed upon mark, and damages (sometimes tripled).

A common law search report covers live trademark applications and registration at the USPTO as well as applications that are dead and abandoned. Further, our common law search also scours millions of websites and social media accounts looking for similar content and similar domain names that may reveal someone with superior rights to your trademark. 

Beyond the steps we take in completing a comprehensive trademark search, there’s little more you could do ensure that a name is available to register. A search report is 5 or 10 pages that could make a huge difference if you ever find yourself in court. You can download an example common law search report here. 

Conclusion

Filing and acquiring a federal trademark without a common law search is entirely possible, but carries with it great risks, which may not emerge for years or decades. It’s probably not worth risking your future livelihood to save a few hundred dollars now.