Identifying obvious risks of rejection
A trademark knockout search generally refers to a preliminary search of the USPTO trademark database (aka TESS) for identical or highly similar marks. The goal is to obtain a quick assessment of the likely conflicts may arise with registering your proposed trademark. 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 and services are. The reverse could be true – the marks are identical, but the goods and services appear unrelated. So, one of the practical benefits of using an experienced trademark attorney is the opportunity for a discussion of whether or not it would make sense to proceed in light of these borderline trademark filings.
What a knockout search would not cover
Knockout searches are intended to find prior filings for very similar 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 thank 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 would be an efficient use of limited resources. While certain unknown risks may still remain, of course, knocking out obviously conflicting trademark filings at least clears the path for a likely registration.
Choosing a Business Name
For the same reasons, entrepreneurs ought to consider a knockout search even before choosing a company name. Why go through all the hassle of incorporating only to find out later that someone else already registered a very similar name for similar products? Beyond incorporation, you may have to change a brand in which you’ve invested not only money, but a great deal of time developing.
Advantages of Knowing 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 registered mark or a prior filing. Since it could 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 enables startups to shift to new marks that may carry less baggage.
Even if you decide to stick with a new mark that may carry certain risks, earlier knowledge of potentially similar trademark filings allows 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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