How do we identify the risk of likelihood of confusion rejections before filing a trademark application?
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”). 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. Unregistered common law trademarks are not covered in our knockout searches.
Need a trademark search? Email patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore how we can help you search for similar marks before filing your trademark application. Gain peace of mind by filing with confidence or pivoting to a new trademark, if necessary.
Does our knockout search cover only identical marks?
No, our knockout searches will look for highly similar marks filed with the USPTO. In performing a knockout search, we may find certain trademark registrations 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. For example, 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 trademark filings that are borderline similar to your desired mark.
Our knockout search, however, does not cover all arguably similar marks. We seek to find only live filings for highly similar trademarks.
What is not covered in a trademark knockout search?
Knockout searches are intended to find prior filings for highly similar marks. We strive to search for filings beyond identical marks, but not necessarily all similar marks.
Furthermore, our knockout searches do not cover other types of rejections such as mere descriptiveness or failure to function. A seasoned trademark attorney should be able to advise you on the possibility of rejection due to issues other than likelihood of confusion.
Sometimes a knockout search will uncover trademark filings that require a deeper dive. For example, a pending application may have encountered rejections that may similarly block your mark. A registration may have potential weaknesses that can be exploited to negotiate a possible coexistence, or consent agreement. We can provide flat rates for such further deeper analyses if desired.
How to Get the 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.
How to Use 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.
What are advantages of knowing trademark risks sooner?
While the government filing fee for a USPTO trademark application is $350 per class (online filing), I would argue that time is a much more precious resource that should be saved. And time is sacrificed when your trademark application is rejected due to your mark being too close to other trademarks. Since it can take four to eight 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 due to 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.
Need to search a trademark?
Contact US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can search your desired trademark. Avoid delays by having us file your trademark application properly.
