Professional Trademark Search: Should I Pay for This?

The answer is: “It depends.” Like most simplified questions asked to lawyers, the answer to this depends on your individual situation. If simple questions had simple answers, software would be written to replace lawyers, in which case I’d be out of a job but not out of my obligation to pay for law school. Ouch.

Professional trademark searches can be valuable when you need to know whether your proposed trademark will likely be granted trademark registration by the USPTO; and when you need to know quickly and with some degree of certainty. Basically, if you are about to invest a relatively significant amount of resources into a brand without having a trademark registration, I would recommend first investing in a full professional search report.

This situation commonly arises when a company develops an idea for a brand or company name, and is ready to move quickly with branding and marketing. While a trademark registration typically takes 6-9 months to clear, at best, marketing can be ready much sooner than that. The dangers of moving ahead without a finalized trademark registration can be any of the following, plus more:

  • possibly infringing upon someone else’s trademark, and being liable in court for the infringement.
  • spending significant amounts of time on marketing efforts, and then finding out you infringed on another trademark
  • spending significant amounts of money on web development, stationary, and advertisements, and then ultimately failing to secure a trademark registration
  • choosing a brand or company name, and not being able to secure key domain names
  • investing many resources into the new brand or company name, encountering any of the problems above, and then having to spend more resources on rebranding
Trademark lawyers should be able to offer  you a professional search report from a third party, such as Thomson Compumark, which I personally like to use with my clients if needed. The costs range from approximately $600-$1400 USD, mainly depending on how quickly you need the report done (1-4 days), and you should also factor in 1-2 hours of your lawyer’s time to review the report as well, which can sometimes be hundreds of pages long.
By ordering and having a good trademark lawyer review a professional search report, you can get near a 90% certainty as to whether your proposed mark will succeed at becoming a registered trademark. On the other hand, if you have already been using your brand for some time with no problem, and you are not necessarily expanding your business at lightening speed, then a full search probably is not necessary for your situation, and you should not be “sold” on this extra service by your lawyer.
– ck
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