Trademark search investigations - Griggs Bergen LLP














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              Patent Attorneys   Trademark Attorneys

                             Dallas Texas USA



   Trademark searching and clearance


Trademark searching is frequently a source of useful information for avoiding conflicts in the marketplace. However, searching does have limitations as explained in more detail below. We want you to understand the significance of these limitations. There can be no such thing as an infallible search. Although the search process is intended to reduce the potential for infringement claims, the risk of conflict is never completely eliminated. Even the most thorough search may not uncover each potentially conflicting mark, for several reasons.


Scope of investigation

It is sometimes necessary for us to make a judgment as to what is reasonable in order to provide the results our clients want or need and in a cost-effective manner. This is particularly true if a cost limit has been set.


Depending on the reason for searching, the compromise between thoroughness in searching on one hand, and time and cost on the other, may be made at different levels. Our regular search looks for registered trademarks and applications for registration (U.S. Trademark Office only).  It does not cover marks that are in use but for which there is no application or registration (common law marks).


A more comprehensive search (to include unregistered common law marks, trade names and domain names) may be recommended, depending on your specific needs.  For example, if franchise operations are planned, a comprehensive search of unregistered (common law) marks and state trademark registrations should be conducted.


Unregistered marks

Substantial rights may be acquired by actual use of a trademark, and if you know or become aware of the same or similar mark being used on a competitive product, please let us know, with details, so we may advise you further regarding selection and clearance of a more promising mark.


Famous marks

Our search looks for marks that are the same or similar to your mark and which cover goods or services that are the same or similar to those for which you intend to use your mark. However, use and/or registration of your mark may be brought into question if the same or similar mark is already registered for goods or services that are not similar to your goods or services, where the use of your mark would dilute, diminish or otherwise compromise a distinctive quality of a "famous" or well known mark.


Therefore, you should consider carefully before adopting a mark which is the same as or similar to a famous or well known mark that is being used by another company, even if it is being used in a different field of activity.  Please tell us about any such mark even though you may feel that it is totally unrelated to your business.



You should be aware that a mark will not be accepted for registration if it is merely descriptive of any of the goods or services that are to be claimed.  It is not practical for us to check this except in obvious cases, since the range of terms used in any field of business is large. You are in a better position to know the commercial terms commonly used in your field of business. Please tell us if you think there may be a problem so that we can consider it.


Data base limitations

Our regular searches are made using the U.S. Trademark Office data base (which includes registered marks and pending applications) and a private data base search service for comprehensive common law searches.  Although we have no reason to doubt the reliability of these data bases, we cannot be responsible for data base errors or omissions.


There is sometimes a delay of up to three months before new data is posted for searching in the on-line records of the U.S. Trademark Office.  Therefore, some recently filed applications and registrations may not be available for searching at the time your search is conducted.


The data from the U.S. Trademark Office registry does not always show if a foreign origin application is to be made retroactive to the filing date of a priority application in another country. This information may not be available until registration. Such backdating could move back the priority date of a potentially conflicting application by up to six months.


Other countries

Unless indicated otherwise, our searches are limited to trademark applications and registrations that give rise to rights in the U.S.  Let us know If you want to extend the search to other countries.  In some countries, for example in Canada and European countries, use without registration can give rise to substantial rights, the same as here in the U.S.



Contact the lawyers at Griggs Bergen LLP to schedule a confidential consultation. 



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