by Mark J. Rosenberg
Just because you and your marketing consultant believe the name of your new product or slogan is original does not mean that no one else possesses superior rights. Before using a new trademark, a business owner should always conduct a search to determine whether anyone else can claim rights in the trademark. At a minimum, one should conduct a cost-free search of the United States Patent and Trademark Office’s (USPTO) Internet database of trademark registrations and pending trademark applications.
However, these cost-free searches are of limited value. Using the search tools provided by the USPTO, it is often difficult to uncover relevant trademarks that are phonetic equivalents, or spelled slightly different than the new trademark. Yet, these types of trademarks can be just as problematic as identically spelled trademarks. Also, a USPTO search does not reveal common law trademarks. These are trademarks that are used in commerce but for whatever reason, their owners have not registered them with the USPTO. It's important to note that the owner of a common law trademark can possess nearly all the rights that the owner of a registered trademark possesses. As a result, a common law trademark can pose just as many problems for the new trademark user as a registered mark. Indeed, when businesses are blindsided by a cease-and-desist letter alleging trademark infringement, the letter is often sent by the owner of a common law trademark.
In other words, if you rely solely on a free USPTO search, you get what you pay. Thus, it is advisable to conduct what is often referred to as “full” search. Full searches are conducted by services that scour a variety of databases in order to determine whether there are any registered, applied for or common law trademarks that are any identical, similar or equivalent to the new trademark.
If the trademark search reveals no conflicting trademarks, the business owner should promptly file an application to register it with the USPTO. Because the USPTO operates on a first-to-file basis, any delay in filing an application opens the door for a third party to file an application to register a similar trademark. If that application is filed before yours, it can become much more difficult, if not impossible to register your mark. Because of the first-to-file rule, that can be the case even if you are the first to use the trademark.