Trademark Availability Opinions

Before a company invests in a new trademark it makes sense to determine whether the mark is available, not available, or can be adopted and used with certain modifications to reduce risk of a third-party objection.

Trademark lawyers do not use the U.S. Patent and Trademark Office (“USPTO”) web site to conduct trademark availability searches. The reason is that typing a word mark into a search box does not generate results for “sound a likes” (grey fox and gray foxes), marks with similar meanings (beautiful boy and handsome boy), or foreign equivalents (black cat and chat noir). Most importantly, a search of the USPTO database does not reveal unregistered but relevant marks, the owners of which have legal rights that would thwart new mark adopters every time.

Trademark lawyers use outside databases compiled by third-parties with expertise in the field. The search companies use search constructs that are designed to include all relevant hits. Most importantly, third-party databases are designed to include common law users, by searching for example Secretary of State business filings and using web crawling software.

Many firms price trademark searches according to the scope or comprehensiveness of the search resources consulted in forming an opinion. But search data generation – no matter how comprehensive – is not the end of the undertaking. Trademark lawyers review hundreds of pages of search data to arrive at opinion on availability. The search data provides a snapshot of the entire “landscape” for the proposed mark and relevant industry. This broad view informs trademark lawyers on the scope of protection afforded to each individual mark and determines the level of risk associated with proposed marks taking into account their similarity to cited references.

We offer two levels of trademark availability opinion work, both on a flat fee basis. A decision on which search availability product makes sense for your company should be guided by the nature of the mark, the nature of the goods or services, the plans for use, and the upfront investment that the mark owner anticipates to launch its brand. Contact the trademarks attorneys at Cahill IP to discuss whether a trademark availability search is right for your new brand.