Our search includes:
- Comprehensive Trademark Search of federal and state trademarks in the U.S.;
- Use of the Internet and USPTO resources to conduct the search;
- Report of similar marks;
- Legal Opinion written by a Trademark Attorney;
- Attorney Consultation Time; and
- Completion usually within a week.
It is important for an experienced attorney to craft a search strategy that searches in the correct goods and services and not just a classification search. Lehner Law uses wildcards to find alternate spellings and similar words. We search for marks that sound look and similar. We identify design elements in a logo and search those as well.
The U.S. is generally a first-to-use system, so sellers who have earlier uses of similar trademarks will have superior rights over people who enter the market later. Both our knock-out search as well as a USPTO Examining Attorney’s searches only uncover trademark registrations and applications and will not reveal early uses with superior rights if those sellers never applied for a federal trademark. We do more extensive searches using the Internet and other resources to find common law uses.
A formal opinion can constitute good faith and defend against a claim of willful infringement. Sports Authority v Prime Hospital Corp., 89 F3d 955 (2nd Cir 1996). However, there is no requirement to conduct a trademark search or obtain advice of counsel to avoid a finding of willful infringement. Often, an intent to capitalize on the goodwill of the senior user, in addition to failing to properly investigate the matter, may be required for a willfulness finding. See McCarthy at § 26:10. Many businesses might determine that cursory searches are so inexpensive, the risk of later litigation make such searches worthwhile. Furthermore, the more important the mark will be in terms of marketing, the more detailed searching makes sense.
However, J. Thomas McCarthy, an authority on trademarks, said in his well-known legal treatise McCarthy on Trademarks and Unfair Competition “it is almost impossible to find out with total certainty whether anyone has previously used a non-registered trade name in the United States such that every possible conflict can be foreseen in advance. Thus, even an expensive and extensive trademark search can only provide a conditional guarantee that no conflicts exist. But [any] search is better than no search at all.”