FAQ – Trademark Screening Search

Q: What is a Trademark screening search?

A: It is a type of Trademark search that is intended to find published Trademark applications and registrations in the records of the United States Trademark and Trademark Office (USPTO) that have similar characteristics to an invention. We also do a very limited survey of the internet in general.

Q: Why do a Trademark screening search?

A: Typically, a Trademark screening search is performed in the initial stages of developing a business around a brand. The Trademark screening search is a cost-effective search that gives one a better understanding of the likelihood that the brand or an element of the brand may be protected under US Trademark laws and also provides a cross-section of similar Trademark publications. Trademark screening searches are estimated to be about 85% effective in discovering relevant references and are a fraction of the cost of more extensive searches.

Q: My Trademark results do not include an opinion, why?

A: Any written statements about a brand can potentially be used against the owner of a Trademark. Therefore, an appropriate level of care, effort, and research should be made before making any statements about an invention. This is especially true with statements about its protectability or whether or not it infringes on another mark. Therefore, it is our practice to wait until a screening search is completed before even discussing preparing a written opinion.

Q: How much does an opinion cost and how do I know if I need one?

A: Written Trademark screening opinions generally cost twice what the search cost. These costs may vary depending on the search results. Opinions are often used to help third parties understand the results of the search. Investors, strategic partners, licensors are often attracted to a positive opinion. Also, a positive opinion can be beneficial in increasing your bargaining strength when selling a company that owns a particular brand.

Q: What other kinds of Trademark searches are there, what do they cost and what do they do?

A: There are many kinds of searches. Each search may be performed with or without a formal written opinion. The following are some examples:

Trademark Registrability Search ($2,000+ billed hourly) – more extensive search of Trademark and non-Trademark publications

Clearance Search ($3,000+ billed hourly) – search of registered US Trademarks currently in force to discover Trademarks that a particular brand might be infringing

Landscape Search ($1,500+ billed hourly) – search of Trademark publications related to a particular niche, competitor, and/or market segment to determine who the key players are, what they own and spot brand trends

Validity Search ($5,000+ billed hourly) – an extensive research of a particular registration and of brand usage in the public by others before the particular Trademark registration and intended to discover any weaknesses or vulnerabilities that relate to its validity that may have been overlooked or undiscovered during the Trademark process.

Q: What should I do with the results of my Trademark screening search?

A: Be sure to store the results in a safe and secure place where you can reference them again as needed. The results are confidential and attorney-client privileged materials, so you should not show them to others without an understanding of confidentiality. You should review the results to the level of detail you feel is appropriate and should discuss the results by phone or in person with your attorney. We recommend that you not put your opinion about the results in an email or letter to anyone.

Q: What is next?

A: The Trademark screening search is intended to give you more information so that you can make the following decisions: 1) Would a more extensive search be appropriate? 2) Would a formal written opinion based on the search results be valuable to you? 3) Should you invest in filing a Trademark application to protect the brand or brand element from companies who would confuse your customers? As you make those decisions, you move forward in the process to protect the technology and the opportunities. Be sure to involve your attorney in your decision-making process so you can leverage that expertise.

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