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To avoid being sued for trademark infringement, before creating and using a new trademark, you must conduct a trademark search. This search will determine if there are any existing trademarks being used that are the same as — or confusingly similar — to the trademark you are planning to use. Further, if you want to register your new trademark at the federal or State level, you will need to conduct a trademark search. Under both federal and State trademark laws, you cannot register a trademark that is already in existence and being used.
Thus, to avoid being sued and to lawfully register a trademark, you will need to make sure your trademark is unique.
A search for common law trademarks is the most comprehensive type of trademark search available. In conducting a common law trademark, your search will automatically “pick up” all the registered trademarks. In very simple terms, a common law trademark is one that is NOT registered at any level and, very likely, is a small-use trademark for a limited amount of products used in a limited geographical area. Why? Trademarks have commercial value, and when a person or business has something of value, they obtain the maximum legal protection for that asset. In other words, the owner of the trademark will get the trademark registered. There are only a few reasons why an owner would not get a trademark registered. Those reasons are a limited quantity of products being sold or services being provided and/or the trademark being used in a very limited geographical area.
What Does a Common Law Trademark Search Involve?
A standard trademark clearance search generally involves searching the public databases operated by the federal and State trademark offices. Then, general internet and public databases searches are done for the words being used in a proposed trademark, along with image searches for logo and design trademarks.
A common law trademark clearance search will add additional database searches of existing and historical news, business, legal, and financial records. For example, states have databases for any corporate entity that is created. Common law trademarks could be found among those records. Likewise, if a company has a “doing-business-as-name,” many states require that the doing-business-as-name be registered and recorded in the local county recorder’s office. Common law trademarks might be uncovered by searching those records.
What Happens if a Common Law Trademark is Uncovered?
It depends. If you register your new trademark at the federal level, your trademark has national coverage and could extinguish the common law trademark. Alternatively, the common law trademark might be allowed to continue being used in its limited geographical area. The Burger King trademark is a famous example of that situation. The national restaurant chain has the national trademark, but there is a 20-mile geographical carve out for a locally-used Burger King trademark for a restaurant in down-State Illinois.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
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