Trademark Searches

Almost every business in the Palm Beach area sells its goods or services under a trademark or service mark. A trademark or service mark is any phrase, name, symbol, or device, or any combination thereof,that is used to identify and differentiate one seller’s goods and services from those of another. Intelligent business owners and managers should do a trademark search before building a brand.

A trademark search consists of a thorough investigation of multiple sources, including the trademark databases of the United States Patent and Trademark Office (the “USPTO”), to establish whether a trademark or service mark 1) infringes on the rights of a previous user and 2) is eligible for registration with the USPTO.

Generally speaking, business owners invest a large amount of time, money, and other valuable resources in brand development. Before making such an investment, the USPTO (at the very least) must be reviewed to determine whether the proposed mark is available for use and if it is registrable according to USPTO guidelines. Should the results reveal prior similar marks, then decision-makers will likely not want to expend time or effort developing a brand name when the risk of infringing on someone else’s mark exists. By conducting a search first, the risk of wasted time and energy is minimized. A trademark lawyer should be considered to handle the legal research to establish whether a trademark or service mark is accessible and may be registered with the USPTO. The lawyers at The Plus IP Firm would be ideal to assist with such searches on your behalf as we have successfully registered hundreds of trademarks and service marks for our clients.

While it is not required by law to conduct a trademark search prior to submitting an application with the USPTO, it is wise to do so to identify whether a trademark or service mark may be registered. A thorough trademark search will reveal any trademarks or service marks that may obstruct an applicant’s ability to register a mark. The Plus IP Firm always recommends doing a trademark search before filing a trademark or service mark application with the USPTO.

The number one reason that a trademark is refused is due to a “likelihood of confusion” with another already registered or pending mark. A trademark search can determine whether a “likelihood of confusion” refusal is likely to be encountered during the examination process. After a trademark or service mark application is filed with the USPTO, an Examining Attorney will conduct their own review of the USPTO’s records to determine whether the trademark or service mark is likely to be confused with another trademark or service mark that was filed or registered with the USPTO prior to the date of the applicant’s application.

An Examining Attorney at the USPTO considers the following elements when determining the possibility of confusion:

  • how similar the marks are in appearance, sound and pronunciation;
  • the degree to which the products or services are related;
  • how the goods or services are moved from one area to another;
  • the circumstances under which products are presented and bought, such as “impulse” vs “careful” or “wise” buying;
  • the number of similar marks currently on record associated with similar goods and/or services; and
  • the possibility of an existing misunderstanding on the part of the consuming public.

According to our findings, Examining Attorneys at the USPTO regularly deny trademark and service mark applications based upon a mistaken assessment of the potential for confusion. The lawyers at The Plus IP Firm would be happy to analyze a USPTO 2(d) rejection or “Office Action”, which is a rejection based on the likelihood of confusion. Thanks to the dedicated and detailed efforts of The Plus IP Firm, many 2(d) Rejections have successfully been overturned.