Three Reasons NOT to do a Full Trademark Search


What? A trademark lawyer suggesting that you needn’t always conduct a full-scale trademark search before you file a new trademark application?  Isn’t that tantamount to driving without a seat belt?  Hear us out.

  1. Longstanding brands. Say you’ve been using a brand name or logo nationally for a long time, and just never got around to registering it. Nobody’s ever objected, and you have no evidence that anyone else is using a similar brand. You’re not going to change the brand if you get a refusal or someone opposes your application, right? Well, shucks. Think about doing a super-quick search, skip the full search expenses, put your feet up for a while, and see what happens. Of course, your application may draw the attention of the owner of an arguably similar brand previously unknown to you – but maybe you will decide that the cost savings and benefits of federal registration are worth that risk.
  1. Brands you won’t launch for a while. Budget got you down? Don’t need to start using the brand right away? Maybe a quick-and-dirty search will be enough to confirm that no one else has exclusive rights in the brand, such that you can jump right to filing an application, and then waiting to see how the Trademark Office and potential opposers react. This strategy isn’t for the faint of heart, but sometimes, businesses decide that saving money justifies the additional risk. This approach can be attractive to those who need a batch of new brands, and who can pivot quickly to a backup brand if the preferred candidate doesn’t work out.
  1. Brands you can phase out quickly and inexpensively. Now we’re really going out on a limb, but – some (fearless!) businesses skip full searches if the brand will be used for a limited time frame in a limited geographical area, or if they’re not making a big investment in inventory or promotional materials. They figure, “What’s the worst that can happen? I have to stop using my brand on short notice?” Well, yes, and you might have to pay someone damages for infringement, too. If you enjoy adrenaline jolts, this option may be attractive to you.

Okay, okay, we have to close this out by noting that these musings are food for thought, and may not be the best approach for you. There are plenty of good reasons to do searches, especially before you start using a new brand, and before you enforce your trademark rights. But it’s worth mentioning that a rote approach of “Do a full search, every time!” may not be the best use of your money.

If you do decide to get your search on, check out Tore DeBella’s tips here! P.S. No trademark search companies were harmed in the creation of this post. Not fatally, anyway. (We still love you.)

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.


About the Author: Jennifer Dean

Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.

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