WHAT IS A TRADEMARK KNOCKOUT SEARCH?
The U. S. Patent and Trademark Office registers around 2.7 million trademarks each year. Moreover, it also grants approximately 4 lakh new registrations per year. The race for getting a trademark was at an all-time high during the past two years during the Covid-19 pandemic. In 2020, the USPTO received around 7.4 Lakhs trademark applications. Are you also one of those planning to file for a trademark with USPTO? If yes, a trademark knockout search must be the crucial step that you must not ignore. Let us see “What is a trademark knockout search?” and “How can a trademark knockout search help businesses and companies seeking trademark registration with USPTO?” We will also discuss the significance of a knockout search for companies wanting to register their brand names.
No matter which stage of success your company is at, whether an established and successful business or an emerging name in the mark, a trademark knockout search is a must before you file for trademark registration. This is because the knockout search will confirm whether or not someone else is using your mark and save resources investment into filing and prosecution.
What is Trademark Knockout Search?
It is a search performed on trademark databases (such as the TESS database of USPTO) to detect identical or similar trademarks. By conducting a knockout search before trademark application filing, the applicant can find out whether his business name is trademarked or not. Moreover, a mark knockout search considers only the words of the mark into account, excluding the images, symbols, and designs.
A trademark knockout search deals with the following fields:
- Abandoned trademark applications
- Expired trademarks
- Existing trademarks
- Common law trademarks
- Pending trademark applications
By performing a knockout search, a company can analyze the risk of rejections for their proposed mark based on the likelihood of confusion.
A trademark knockout and clearance search will help you analyze USPTO’s risks and grounds of rejection based on the likelihood of confusion. Along with performing a trademark knockout search, one must also closely examine similar marks. Also, the applicant should focus upon the visual, aural, and connotative similarity while examining similar trademarks.
How Knockout Searches Help Companies in Choosing the Perfect Brand Names?
It is extremely crucial for companies to come up with a unique name that can not only act as a differentiator for customers but also convey the message to them. To protect the unique name from infringement, the companies resort to registration routes with USPTO or states’ trademark offices. But, the USPTO rejects the trademark application if there is already an identical or similar mark in the market. This is where a trademark knockout search comes into the picture.
An exhaustive knockout search will help the companies to check the availability of their proposed brand names.
How to perform a Trademark Knockout Search?
You can conduct a knockout search using various free tools. You can find the list of free tools for trademark search here. However, it is always considered best to hire a professional for conducting a knockout search. This is because even the best free tools, such as TESS, end up missing on some marks, such as trademarks that are registered with USPTO but not yet launched.
What Points Should be Kept in Mind while Conducting a Knockout Search?
1. Conduct Exhaustive but Specific Searches
By conducting an organized knockout search, you will not only remain stuck to the requirements but also save time and money. Thus, you should search all the important platforms for similar marks but always stick to the need and not get distracted.
Making a checklist of platforms to cover is the best option for a comprehensive availability search. The list should contain:
A checklist must include:
- App stores
- News sources
- Competitor websites
- e-commerce platform
- Social media Channels
- Government regulators
- Company name databases
- Internet domain registries
- International dictionaries (for checking the similarity between different languages)
- Regional, State, National, and international trademark registries (as per use)
2. Use Modern Technology
It gets difficult and time-consuming to search through all the databases in the list. Thus, it is best to use modern technology and search tools to save time and labor.
3. Filtering the Search Results
Once you have searched through the platforms, you will have thousands of results. So, refining the relevant data is a time-taking but crucial step. Manual analysis is important to filter out obstacles such as:
- Marks that are not identical but the goods and services provided under them are closely related to yours.
- Identical trademarks but irrelevant goods and services
Why Should I Hire A Professional for Trademark Search?
- Free Tools Don’t Cover Everything
Yes, free tools such as TESS do not cover marks that are registered with USPTO but not yet launched in the market. So, a professional trademark firm that covers each and every conventional and unconventional database is your best bet.
- Refining the Search Results
Technology and tools can only provide you with the results. These hundreds of results and datasets need manual analysis to eliminate the irrelevant ones.
- Take the Right Decision
An IP professional will help you decide whether you should continue with the trademark filing or not. If you can’t continue, they will also help you to make the necessary changes in the mark to avoid rejection by USPTO. Even though a knockout search will only anticipate rejection based on the likelihood of confusion, a well-experienced professional will also help you identify rejection based on merely descriptive or deceptively misdescriptive marks.
What Would Trademark Knockout Searches not Cover?
A trademark knockout search is only targeted to find similar or identical marks. Thus, its only aim is to eliminate the risk of rejection by USPTO based on the likelihood of confusion. It will not anticipate the rejection based on:
- Merely descriptive trademark
- Deceptively misdescriptive trademark
- The trademark is primarily merely a surname
Why Choose TMReady for All Your Trademark Related Needs?
No matter what trademark service you are looking to get done, we offer it all with top-notch results. TMReady is your one-and-done solution for all things trademark ranging from trademark search, trademark monitoring, docket services, as well as IP paralegals. We offer our services in various countries such as Japan, USA, UK, China, India, Canada, etc. Our vision is to make trademark easy for companies and businesses so that trademark becomes a reputation maker for our clients. So, do you want to build your startup or company as well? Give it a unique differentiator by a trademark. Want to know more? Check our website here.