Prior to filing a trademark, there is no legal requirement a comprehensive search be conducted. In fact, there are many cheap ways to obtain a federally registered trademark; including doing it yourself, through a service like LegalZoom, or a number of other law firms that will prosecute trademarks without a search and then upsell a search (e.g., $599 for trademark filing and $599 for a search).
Our approach is a comprehensive trademark package, TotalTM. This means TotalTM is not the cheapest way to obtain a trademark, but instead includes a thorough process that maximizes protection, minimizes risk and remains cost effective.
The search vendor we utilize (we pay a third-party a large sum) warrants that their database finds more than 99% of confusingly similar marks. So what?, you ask. Think of it this way; Successful commercial enterprises spend millions of dollars to clear a mark through the opinion of trademark counsel, so they don’t have the issue that the mark is unavailable or not protectable. More importantly, they pay for the search to mitigate the risk of a lawsuit from another party claiming the proposed mark is infringing on their mark. (and that type of lawsuit generally comes after even the United States Patent and Trademark Office has cleared the mark an issue).
Not only does a thorough search provide data to find confusingly similar marks, but it also helps attorneys identify weaknesses in marks that will minimize protection. It may also require significant additional costs to prosecute. This further assures that our clients will not spend money building up a brand that they ultimately may need to abandon, trademark, or not trademark.
Additionally, our search opinions give our clients the defense of diligence in the case they are sued for bad faith or willful infringement. This is something both our clients and attorneys can rely on.
In summary, there is always going to be a cheaper way to do things and sometimes that is by cutting corners. In the world of trademark, don’t cut corners when it comes to the search and attorney opinion. We don’t and won’t.
If you are curious about further discussions and insights from Steve, he will be featured on “The Quiet Light” Podcast hosted by his friend Joe Valley. Joe is a nationally renowned eCommerce mergers and acquisitions expert, and they will be discussing the importance of securing and documenting a brand portfolio to maximize the value of your business. Stay tuned for details!