An applicant is not required to conduct a search for conflicting marks prior to applying for federal trademark registration with the U.S. Patent and Trademark Office (USPTO), however, it is strongly recommended. In evaluating an application, a trademark attorney in the USPTO conducts a search and then notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search cost, will not be refunded even if a conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the trademark attorney determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the foods or services of one party with those of the other party as a result of the use of the marks are issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.

It is easier to analyze a trademark being made-up of one or more "formatives". For example, the mark "STARBUCKS" is made up of two formatives "STAR" and "BUCKS". When determining if a proposed mark is likely to cause confusion with another mark, first identify whether the marks use identical or similar formatives, the order of the formatives, and relative relationship between the formatives (i.e. is one formative dominant and the other recessive, both dominant, both recessive).

There are several resources that can be reviewed during a trademark search. The first resource is the trademark records in the USPTO for all registered marks and pending trademark records in the various fifty state trademark filing offices. A third resource is various publications which contain listings or advertisements of various products or services in different areas in the U.S. These resources include local newspapers, magazines, telephone books advertisements, and trade journals. A fourth resource is the trademark records in various countries, such as Canada, Japan, and the European Trademark Offices. Which resource is reviewed depends on how much money one wants to spend on a trademark search. At a minimum, one should review the trademark records in the USPTO and the various fifty state trademark offices.

Depending on the number of different resources searched, the overall cost of a trademark search can be $100-1,000.00. If a conflicting mark is found during the search, the cost of the trademark search is not refundable. To reduce the econimic risks to our clients, we encourage our clients to conduct their own preliminary trademark search using the U.S. Patent and Trademark Office web page. In addition, we offer free preliminary trademark searches. These preliminary trademark searches act as a screening mechanism to determine whether a full trademark search is needed. Since interpreting the trademark search results can be confusing, we also review and offer an opinion regarding the trademark search results for a small fee.

If you would like us to review your search materials or would like us to conduct a full trademark search, please contact us at (425) 637-3035 or by e-mail at dac@nwpatents.com