Trademark Registration Guide and Information

Trademark Search – Is it necessary?

Given the additional cost, it is not surprising that an applicant would want to avoid conducting a trademark search prior to filing an application. While searching is not mandatory, it can help to determine the availability of the proposed mark for registration and ensures that the mark does not infringe the rights of another person.

One of the requirements of a registrable mark is that it must be distinctive. In other words, the proposed mark must not be identical or confusingly similar to an earlier mark. One of the common objections raised against a trademark application is citation objection, i.e, the proposed mark is identical or confusingly similar to an earlier registered mark. A pre-file search of the Register helps to avoid such objection which can incur additional costs.

A search report also places the applicant in a better position to decide whether or not to proceed with the filing of a proposed mark. If the search report is unfavorable, it allows the applicant to make appropriate amendment to the proposed mark prior to filing, with a view to increase the chances of success of securing registration. In addition, searches are necessary to ensure that a new mark does not infringe the rights of another person, thereby reducing the risk of a costly infringement action.

In brief, trademark search uncovers conflicting prior registrations before the new mark is adopted and costs are incurred in packaging or other marketing materials.