In my earlier post on trademark searches, I described the basic idea of the knockout search. Today, I want to go into more detail on that subject. The knockout search is basic research that you can do yourself. You are looking for any obvious conflicts with existing trademarks. If your knockout search returns a very similar mark used for products/services that are related to the ones you intend to offer, you should probably look for a new trademark. As a reminder, this search is not a replacement for a comprehensive search performed by an experienced trademark attorney. But it can save you time and money by stopping you from hiring an attorney to perform a search where there is an obvious conflict.
What Is a Trademark Conflict?
The first thing you need to know to perform a knockout search is what you are looking for. The answer is any trademark that is “confusingly similar” to the trademark that you would like to adopt. So how do you make that determination? Generally, the two most important factors are as follows:
- Are the marks themselves (names/logos/slogans/etc.) similar?; and
- How related are the products/services with which the marks are used in connection?
As to the first question, there are a few ways the marks can be similar. They might appear similar, like if they are spelled the same, for example. They also might sound similar. If someone just told you the name “sticks” for example, you would not immediately be able to distinguish it from “styx” or “stiks.” For the second question, think about whether the products/services could originate from the same source. For example, you might not think clothing and retail stores are that related at first glance. But both of these things are provided under the names OLD NAVY, BANANA REPUBLIC, and NIKE. If you find a very similar mark used for the same or related goods/services, you may have a conflict on your hands
Google Knockout Search
The first place you will probably want to start your search is on Google. Here, you will be looking for others that have acquired common law rights to a similar mark. While someone with common law rights may not have applied to register their mark, in some cases they can use their rights to oppose your trademark application or to cancel your trademark registration. Also in some cases, especially if they are geographically close to you, using a similar mark may be an infringement of their trademark rights.
So perform a Google search. See if you find any similar marks, and particularly anything that looks to still be in use. The more current and active their website and social media are, the more likely that they may pose a problem. While finding a site that hasn’t been updated since 2002 does not automatically put you in the clear, it may indicate that the mark is no longer in use. Social media use is not universal among businesses, but it’s certainly moving in that direction. Businesses with active accounts probably have common law rights in at least some part of the country.
Federal Trademark Search Using TESS
If you do not find anything on Google that looks problematic, you should then turn to the U.S. Patent & Trademark Office’s website. You’ll want to choose TESS on the Trademark page, and then the Basic Word Mark Search. This allows you to type in words from your mark and search for those exact words. And that is why the TESS search is limited: it does not look for variations and marks that are confusingly similar. It looks for exactly what you type in. You will want to filter down to “live” to look for pending applications and existing registrations that have not been abandoned.
If you find a similar registration here, it is almost certainly a problem. Common law conflicts are typically only an issue if you intend to use a similar mark in close geographic proximity, or if you want to register that mark. On the other hand, federal registrations give the owner nationwide rights to the mark. So if you uncover one of these in your knockout search, that usually means it’s time to come up with a new trademark.
Knockout Search Results
So what do you do with this information? Well, if you’re on the fence about whether something is a conflict, you might present this information to an attorney as part of an initial consultation. If you’re pretty sure it’s a conflict, you may want to just brainstorm some other options for a trademark and research them.
Conflicts you find on either Google or the USPTO website might prevent you from registering your trademark. The Trademark Office only looks at the applications/registrations you can find on their site. But someone from Google can oppose your application or cancel your registration based on their common law rights. Even if you are not interested in registration, doing a search (especially of the Trademark Office’s database) is crucial to avoid infringing someone else’s trademark.
Hopefully your knockout search does not turn up any similar marks. In that case, you will want to speak with a trademark attorney who can perform a more comprehensive search. That is true regardless of whether you intend to register your trademark or not. But by doing the knockout search, you may avoid wasting money on a search that reveals an obvious conflict you could have found yourself.
Have You Conducted a Knockout Search and Want To Discuss Your Options with an Attorney?
Whether you found something that may be a conflict, or nothing to worry about at all, a trademark attorney can assist you with your trademark search. If you have done your preliminary searching, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
