Why a trademark search is never 100% accurate and more about comprehensive trademark searches

Although a trademark search is very useful and necessary in order to determine if a mark is registrable, the risk and challenge are never completely eliminated. Even an especially thorough search may not uncover every potentially conflicting mark, for several reasons.

In the United States or Canada, a newcomer to the search process might expect that it would suffice to check only the records of the USPTO or CIPO. However, one cannot rely solely on a Trademark Office database search, since registration is not necessary to obtaining trademark rights in the United States or Canada.

Many valid trademarks exist at common law without ever appearing on the trademark register.

Thus, in addition to checking Trademark Office database, one should check the Internet, and also different marketplaces including Amazon, eBay, Etsy, Shopify and company databases looking for the use of unregistered marks.

Searching common-law marks is not very easy and is never cheap since there is no single source that lists every unregistered mark in current use in the United States or Canada. There are many potential sources of information that could be searched on, and it is not economical to try to search them all.  Just by way of example, a full search in the US will cost you $1500.

Additionally, one cannot expect that every source will provide accurate, complete, and up-to-date information at the time the search is conducted because every database has its limits.

Trademarks Office database, whether Canadian or US, is never completely up to date, because a time lag exists between the time an application is filed and the time it appears in the search database (the delay is about 7-days). Therefore, recently submitted applications will not appear in a trademark search, even though the lag may be only a few days long.

Also, foreign applicants may obtain an effective U.S. (or Canadian) filing date that is as much as six months earlier than the actual filing date if they claim priority from the filing date in their native country.

That means there is always a risk that a foreign entity may file in the US or Canada, and claim priority from the initial filing date in a foreign country. A search will not reveal a trademark that has not yet been filed. This means you could file an application for the mark thinking that it’s registrable, only to have a foreign applicant “jump the line” with a belated application based on an earlier foreign filing date.

Trademarks Office databases are also not always accurate. It’s possible for a system to time out so your search will not uncover all the results. It’s also possible that a trademark is not indexed properly so a confusingly similar trademark may not even show up in a trademark search.

Even if the databases were completely up to date, searching would still be an imperfect science. Trademarks do not always follow established rules of spelling, grammar, construction, punctuation, or meaning. Misspellings, wordplay, unusual constructions, creative punctuation, and other inventive variations are commonplace, and they create unexpected pitfalls for searchers.

For all these reasons, it is possible to perform diligently and evaluate a search, and conclude that a mark is available, when in fact a direct conflict may exist, that are hidden from view.

Let us give you a few examples:

You may do a search for DONUT for advertising services, and the search is clear. However, you will not know that there is a foreign equivalent trademark in French – BEIGNET and although not identical, this mark may present a serious challenge. In Canada, one must search for French equivalents, and in the US, under the doctrine of foreign equivalents, words in other languages are translated into English and are tested for likelihood of confusion.

It’s not possible to search for all synonyms. For example, if you’re searching for WALKING DOGS you may not find STROLLING PETS and this mark, although not the same, may be found confusingly similar. A trademark search for LADY VET may not show trademark search results for MADAM PET DOCTOR.

Finding different spelling is also challenging. If you search for EXTRAVAGANZA, you may not find EXTRABAGANSA, and if you search for VAGABOND, you may miss BAGPOND. A trademark search for QUICK may not uncover KWIK, KWIX, QUIK and trademark search for EASY may not uncover E-Z, EZEE EEZY, EASI.

Trademark Angel uses Corsearch searching system which allows to search for phonetic equivalents and vowel substitution. Once a trademark search is done, all the data can be organized according to relevance.

In addition to the above, it’s critically important to search for the right classes. Omitting a class may result in missing an important trademark. It is advisable to search for broader classification than the real filing to catch all possible conflicts.

Having said this no search is 100% accurate. That’s why we always advise our clients to check the Internet, marketplaces and social media use in addition to asking us to do a trademark search. For social media search, we recommend you use https://namechk.com/, which will allow you to check all domain names, social media usernames – all at once. Coupled with a proper Trademark Office database search, you will have a pretty good idea if your trademark is registrable.

Since a search cannot completely eliminate the risk, the realistic goal is to eliminate as much risk as possible. This is why it’s advisable in addition to doing your own, due diligence to go to professionals who’re experts such as Trademark Angel, a trademark registration firm with over 18 years of experience in the area of trademarks.

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By |2018-12-14T21:16:57+00:00January 13th, 2018|0 Comments

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Anita Mar
CEO and Registered Trademark Agent at Trademark Angel Inc.

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