Identifying obvious risks of rejection based on similar marks before applying
A trademark knockout search generally refers to a pre-filing search of the USPTO trademark database (aka TESS) for identical or highly similar marks. The goal is to assess the risk of a likelihood of confusion refusal by a USPTO trademark examiner (“examining attorney”) reviewing your trademark application. A knockout search typically covers only the wording in the mark, and not any design or graphic elements. Third party services are available for searching design elements.
In performing a knockout search, an experienced trademark attorney may run into certain trademark registrations and/or pending applications that are borderline obstacles to registration. Perhaps the marks are not identical, but the goods or services may be closely related to your product. The reverse could be true – the marks are identical, but the goods or services in the trademark filings appear unrelated to your product. One of the practical benefits of using an experienced trademark attorney, therefore, is the opportunity to discuss whether or not it would make sense to proceed in light of these borderline trademark filings.
What a trademark knockout search would not cover
Knockout searches are intended to find prior filings for very similar marks (i.e., identical or nearly identical marks). Accordingly, knockout searches do not anticipate other types of rejections such as mere descriptiveness. A seasoned trademark attorney should be able to advise you on the possibility of rejection due to grounds other than likelihood of confusion.
Most bang for your buck
For early stage startups on a shoestring budget, knockout trademark searches can be quite cost-effective. Instead of spending thousands of dollars on a comprehensive trademark search that would include common law trademarks (i.e., unregistered), spending a fraction of the cost to identify the most obvious risks to registration would be an efficient use of limited resources. While certain risks regarding unregistered common law use may still remain unknown, knocking out conflicting trademark filings at least clears the path for a more likely registration.
Using a trademark knockout search to choose a business name
For the same reasons, entrepreneurs ought to consider a knockout search even before choosing a company name. Why go through the hassle of incorporating under a particular business name only to find out that someone else already registered a similar name for similar products? Beyond incorporation, you may have to change the brand in which you’ve invested money and time developing.
Advantages of knowing trademark risks sooner
While the government filing fee for a federal trademark application is $275 per class (online filing), I would argue that time is a much more precious resource that is sacrificed when registration is refused due to your mark being too close to a prior trademark filing. Since it can take three to six months from the filing date to hear back from the USPTO, all that valuable time in the early stages of product development may be lost if your trademark application is rejected on the grounds of likelihood of confusion. Early knowledge of obvious trademark conflicts would enable startups to adapt new marks that carry less baggage.
Even if you decide to stick with a mark that carries certain risks, earlier knowledge of potentially similar trademark filings would allow you to craft the trademark application to navigate around the minefield of potentially similar marks. For example, you can restrict the goods/services to a single class and describe them in such a way to minimize overlap with prior trademark filings.
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