Los Angeles Trademark Search Attorney

Performing a trademark search prior to filing an application is critical. Without a trademark search, you may file an application that is rejected for various reasons. 

At Cohen IP, we perform comprehensive US and foreign trademark searches. Our searches go beyond simply providing a search report. Our searches include a follow-up consultation with a trademark attorney to discuss the search results and to dig into the prosecution history of the results. For example, knowing if a problematic mark has received an office action or will issue soon could impact the adoption of a trademark.

Is It Necessary To Conduct A Trademark Search?

Conducting a trademark search is a vital step prior to the commencement or launch of your brand. A properly conducted trademark search will:

• Identify any preexisting trademark registrations or pending applications similar to or related to your chosen mark, 
• Spot instances in which another trademark holder might challenge your trademark even if the United States Patent and Trademark Office (USPTO) accepts your application, and 
• Help you determine how likely it is the USPTO will accept your trademark application. 

One of the most common reasons the USPTO rejects a trademark application is “likelihood of confusion,” or an unacceptably high risk that consumers would mistake your mark for one that already exists. This mistake could lead consumers to misunderstand where a good or service comes from. Consumers might attribute your goods or services to another brand – or assume another brand’s goods or services are your work. 

To address confusion issues, it’s important to compare your proposed trademark with others that may sound similar when spoken aloud, look similar, or create a similar overall impression. It is also important to check whether similar marks are being used on related goods or services. Since the relationship between goods and services can be nuanced, it’s important to work with an experienced trademark lawyer during your search process. 

Trademark searches are most effective when performed early 一 before a brand launch, if possible. Many companies have lost considerable time, money, and effort in developing a brand, only to discover that they cannot use the marks they have so carefully associated with the brand. Brand recognition and consumer goodwill must be rebuilt from scratch when a company is forced to rebrand a good or service due to trademark issues. 

A trademark search addresses this problem early. A trademark search, coupled with consultation from an experienced Los Angeles trademark search attorney, can help you minimize the likelihood that your chosen mark will face challenges. Your marketing and advertising teams can proceed with confidence, building a strong brand that consumers recognize and trust. 

Top Challenges in Conducting a Trademark Search

The USPTO maintains a database of registered trademarks accessible via the Trademark Electronic Search System (TESS). TESS allows users to search both registered trademarks and pending applications. The database includes both active and inactive trademark registrations and applications. 

While TESS is available to the public, the USPTO warns that using the system can be challenging. Major challenges include:

• TESS doesn’t include every possible trademark. TESS includes only trademarks registered with the USPTO. Many trademarks are also in use that haven’t been registered – yet their owners have rights they may assert against conflicting marks. It’s important to consider non-registered trademarks in addition to registered marks during a trademark search.
• TESS’s search system follows specific rules. Users may need to use the USPTO’s Design Search Code Manual to find the correct design codes to describe the requested search. In addition, TESS’s freeform mark search tools use Boolean operators to construct search strings. Attempting to use natural language search – the type common in most search engines – will likely result in incomplete search results. 
• TESS’s search results don’t guarantee a mark will be accepted or rejected. The decision whether to accept or reject a trademark application is made by the USPTO trademark attorney assigned to your application. A trademark search can help you increase your chances of acceptance, but it cannot guarantee acceptance. 

Trademark attorneys are familiar with the many challenges inherent in a trademark application. They can help you navigate a trademark search, interpret the results, and shape your application to meet the USPTO’s requirements and expectations. 

Work With an Experienced Los Angeles Trademark Search Attorney

The USPTO allows members of the public to conduct trademark searches. However, it can be difficult to know exactly what to look for during your search if you’re unfamiliar with trademark law or the complexities of the USPTO system. 

If you’re planning to register a trademark, talk to the team at Cohen IP today. Our experienced Los Angeles trademark lawyers can help you conduct a search, discuss your options, and make an informed choice based on your trademark search results.