1. Is it advisable to conduct a search before I apply to register a trademark?
A search is not required prior to applying for a trademark registration. However, a search can be extremely beneficial in determining the availability of your trademark. When you first conceive of a trademark that you would like to use to market your goods or services, you should immediately check to see if anyone else is using it. There's no point wasting your time with the rest of the procedure if someone else has already registered it.
There are two sorts of risks associated with not performing a thorough trademark search.
First, if you send in an application and it is rejected because there is an existing trademark that is identical or substantially similar, the Office will keep your application fees.
Second, if you infringe someone else's trademark, you could suffer legal consequences: you will have to stop using your trademark and pay whatever it costs to change to a new trademark. You may also be sued for damages for trademark infringement if your use of the trademark actually harmed the original owner's business.
We have therefore automated the search stage of the procedure to enable you to detect identical trademarks protected for identical products/services. This search provides you with information regarding registered marks and applications that are currently pending. Should you have been using your trademark for decades and should this trademark be known by your business relations, it is still advisable to try to protect your trademark even if prior identical trademark rights exist.
You can either take your chance or contact us to try to build a strategy for trying to limit your risks.
See also "How do I know which class my goods fall in?"
2. What is a Comprehensive Trademark Search?
Performing an additional (in depth) comprehensive trademark search may also be recommended. These trademark searches provide you with information on a mark's availability by providing information regarding already existing trademarks, and the status of those trademarks. Depending on where you want to use your mark, you may consider a number of our search options.
As these searches cannot be automated, please contact us to obtain additional information and a detailed estimate regarding these comprehensive searches.
3. Does a Trademark Search tell me definitively if a mark is available?
While trademark searches can provide you with extensive information regarding other marks that may be registered, and the status of those marks (i.e., registered, pending or abandoned), searches do not provide answers as to whether your trademark will be registrable.
This can be explained by the combination of several factors.
First of all, the Trademark Office must examine your trademark to determine availability for use and registration. It will in particular evaluate whether your mark meets the legal requirements to become a registered trademark, such as having a distinctive character or being capable of graphic representation.
Please also note that trademark searches do not disclose all trademarks, and that third parties may consider that your trademark application harm their rights, even if their trademark rights have not been disclosed by the search.
Finally, it is also possible that owners of identical or similar trademarks may not see your trademark or may decide not to intervene against your trademark application, even if your application theoretically constitutes breaches on their rights. A trademark search will therefore constitute an assessment of the risks linked to your trademark application, but will not constitute a guarantee of registrability or of rejection.
4. What type of information will I receive when I perform a trademark search?
You will receive
(1) information regarding the number of marks that are registered on a national, international and community level: this information is provided free of charge
(2) detailed information regarding the cited marks that are registered or applied for in your country of interest, in particular name, dates, classes, list of goods and services, owner, etc.
5. What are copies of the cited trademarks?
We will provide you with all the information stored in the official trademark databases, including:
• Trademark name
• Register
• Application date
• Application number
• Registration date (if available)
• Registration number (if available)
• Owner
• List of goods and services
You will then be able to determine if the trademark is registered or not, if it is still protected (renewed) or not, and the exact goods and services for which a protection is claimed. You can then compare these goods and services to your own goods and services of interest and try to determine if a conflict may exist between your trademark and the older cited trademark.
Please note however that the rights as registered may be limited by use: if a trademark has been registered for more than five years, it can be partially or totally revoked if it has not been used for a part or all the goods and services mentioned in the description of goods.
6. How can I determine if a prior trademark may constitute an obstacle?
The main test for determining the similarity between two trademarks is to see if your proposed trademark is likely to cause confusion among consumers so that they might mistake the two suppliers of products or services for each other. For example, it would be confusing to have a software company called "Micrasoft" because there is already a software company called "Microsoft."
We can conduct this analysis of the trademark(s) revealed by your search, should you prefer to obtain a professional appreciation of the risks.
7. What is a trademark search analysis?
On the basis of our experience and of the earlier trademark data we will provide you with an estimate of the risks concerning your chosen trademark. We will in particular take into account the validity of the earlier cited trademarks, their extent of protection and the possibilities to obtain either a cancellation, a revocation or a limitation of their scope of protection, and we may suggest protection scheme limiting the risks of opposition or rejection against your application.
8. What are pending marks or applications?
These are marks that have not yet been registered, but are either in the queue to be registered, or are on hold, awaiting Office inquiry or opposition from a third party.
An application that has been declared abandoned is "dead" and no longer pending with the trademark Office. Abandonment occurs under several circumstances. The most common reason for abandonment is when the Office rejects an application and requires the applicant or its representative to respond. If the applicant's response to the Office action is not received within the prescribed period set in the Office action, the application will be declared abandoned or rejected.
A dead or abandoned status for a trademark or an application means that specific application is no longer valid, and would not be used as a bar against your filing.
A "live" mark is one wherein the application is pending or the trademark is registered. A "live" mark could be used as a bar against a subsequently filed trademark application.
12. Is a business name the same as a trademark?
A business name, or the name that a business uses to identify itself, is often referred to as a « trade name ». A business name is used in connection with a legal entity (a corporation for example). A trademark, on the other hand, is used in connection with a product or service, which may or may not be the same as an entity's business name.
A business name is not considered a trademark or entitled to protection under trademark laws. Their extent of protection is limited, and these rights are only searched during the course of a similarity search.