IMPORTANCE OF SEARCH IN TRADEMARKING

What is a trademark?

A trademark is a brand name which may be in the form of the word, symbol, slogan, device, or a combination of these. This can also be in the form of smell, colour or design but has to be registrable and legally protectable. It is equally important for big businesses, entrepreneurs and start-ups, especially in the United States where intellectual property rights and infringements are taken very seriously and Courts are generous in granting sanctions.

How is trademark registration beneficial to your business?

A trademark offers assistance to the consumers to identify and distinguish the products, your business or the goods and services provided by you from those of someone else. Additionally, getting a trademark registered is important as it crystallises your right to use the mark exclusively and minimises the risk of your brand name being exploited by others for unjust profits in the long run. In case your exclusive right to the trademark is violated by anyone, registration enables you to bring a lawsuit for enforcement of the right. Once the mark is registered, it is listed in the public domain giving notice of its ownership to the general public.

Why conduct an extensive search before trademarking?

The trademark that you have selected might be phonetically similar to the brand name of another brand or business etc. There is a possibility that the trademark chosen by you is confusing when compared to other marks which will further reduce its chances of registration.

Thus, a trademark search is necessary to be conducted before finalising a trademark application as it helps in analysing the chances of a trademark getting accepted by the registering authority. Identity is of utmost significance to any business around the globe. A trademark search is also essential to prevent legal disputes and complications at a later stage. A trademark that appears to display similarity to another tradename or is in conflict with the existing laws may land you in trouble later making you liable for trademark rights’ violation.

In order to ensure that the trademark is fit for making an application to the registering authority, to conduct a procedural and professional search is imperative.

How searches are conducted?

The process of trademark search begins from deciding the class heading in which a product/ brand name/ business falls by studying the 45 trademark classes. Thereafter extensive search techniques are utilised to find out if there exist similar trademarks in the proposed class of goods. In the United States of America, the federal agency responsible for maintaining a national register of trademarks in the U.S. Patent and Trademark Office (USPTO). The records are explored as a part of the search and often, databases of domain names such as the ICANN, are also searched.

Not only the search of registered trademarks but that of unregistered trademarks is also essential to be conducted in order to finalise a unique trademark. For complex trademarks involving not only words but devices such as pictorial representations, colours and other elements etc., it is important to meticulously study the categories enumerated in the International Classification of The Figurative Elements of Marks under the Vienna Agreement.

A trademark search and risk analysis report prepared by legal professionals is well equipped with information on the likelihood of a product name or brand name being accepted by the trademark registering authority for registration. If you seek a legal opinion on the usability of your trademark, Prodigy Legal LLP extends best services to businesses looking for crisp and accurate legal advice on trademark-related matters. To be sure of the legality of your brand name and to prevent future legal hassles, it is advisable to seek professional assistance from the Prodigy Legal LLP. A search and risk analysis report prepared by Prodigy Legal LLP gives a detailed analysis of legal limitations in way of the proposed trademark.

The author of this article, Isha Kapoor, is a young lawyer with a passion for IPR and international trademark disputes.

Call at +1 (347) 747 6888 to discuss your trademark search and register-ability.