Already did a clearance search on USPTO (TESS) website for federally registered trademarks, but they say you need to search the state level as well, and the Secretary of State website does not provide a way to search? Is a state search even necessary? Doesn't a federal registration supersede any stet registration? Your thoughts are very welcomed on this subject.
A state trademark is particularly of interest where the commerce is geographically limited, i.e., only within one city and probably not adaptable to interstate commerce. If the Asker's commerce is expected to be interstate then the Federal Registration is needed. While the Asker has conducted a search it must be understood that a Trademark Search or Clearance is a professional activity. There are many factors to be considered in addition to the "word, symbol, or device" that is used to identify a source of goods or services. See IP counsel.
My comments have been made without discussion. An attorney client relationship has not been established. There may be conflicts which prohibit my providing you with specific legal guidance. Any contact with you beyond these few general words will start with a disclosure of opposing parties so that a conflict check can be made. You should discuss with an attorney.
You really want to have an attorney perform a full clearance search, which includes not only federal and state registrations, but also common law marks.
Trademark rights are acquired by using the mark in a specific geographic area, for specific goods or services, to distinguish your goods or services from those of others. Trademark rights exist where the mark has become known for its connection with those goods or services. This is known as common law rights. Common law rights do not extend to other geographic areas or to other goods/services unless the mark becomes famous. Federal registration provides a presumption of the right to use the mark throughout the entire country, but is inferior to common law rights that existed prior to the date the application for federal registration was filed. Federal registration is superior to earlier state registrations, but not to the common law rights held by those who hold the state registrations. Thus, state registrations are worth searching so that you can see who might have relevant common law rights.
A full clearance search covers not only federal registrations, but also state registrations, telephone directories, Dunn & Bradstreet, trade directories, Internet domain names, Internet searches, and other sources of information about common law trademarks. Variations, fragments, and misspellings of the mark are searched, so that any mark that might present a risk of confusion is identified. The results of the search are then analyzed, and a written opinion prepared. If the results are favorable, then you can be reasonably assured that you will not receive a cease and desist letter after having spent thousands of dollars on signage, advertising, etc., making the search very worthwhile.
If the trademark includes design elements, be aware that searching common law sources is generally limited to words. However, you can at least search for registered or pending designs here: http://www.wipo.int/branddb/en/. For design portions of a mark, I typically recommend filing an application for federal registration and waiting for examination to be complete before beginning use of the mark.
If the search results are favorable, then an application for federal registration should be promptly filed. This can be done based on a bona fide intention to use the mark, but actual use of the mark is required in order to complete the registration process.
Do not use the searches from the "do it yourself" services. I have been asked to review these searches, and I found them to be significantly more time consuming to review and ultimately less informative than the search I would have obtained. Do not attempt to review search results and draw conclusions yourself. You can get 80% of the way to a correct determination of whether a mark found in the search presents a likelihood of conclusion through common sense, but a 1005 correct answer requires application of the eight factors set forth by the Supreme Court.
You need to type in some more facts and resubmit your question in order to get some helpful and accurate counseling...
The California SOS website is not the easiest to navigate. I suggest you call their help desk and have them walk you through it. This information is available to the public, it is just a question of how to get it.
As pointed out, the state trademark is geographically limited and you should be careful before you rely on it. Talk to an IP attorney.
Attorney Lang has provided a very solid response to your post. I will only add, which may be redundant, that the reasons one ideally clears use before adopting a given mark are not limited to increasing your chances at a successful registration federally or at the state level. That certainly can be a reason. But even more fundamentally, you do not want to adopt mark, and irrespective if you register or not, find someone who has superior common law rights in a confusingly similar mark who may very well sue you for trademark infringement because you are using a mark that may be confusingly similar to their mark, which could lead to all kinds of problems, such as: costs associating with defending your mark, a large monetary judgment, costs involved with having to re-brand, costs associated with scrapping inventory and/or scrapping marketing and promotional materials, etc.
Also, if you end up registering a given mark federally, which must mean you are use, but you did not clear that use - you still can find yourself in trouble with common law mark holders with confusingly similar marks. For example, such common law mark holders may petition the USPTO (TTAB) to cancel your registration. And/or such common law mark holders may sue you for trademark infringement - although the common law mark holders might only prevail against you in the specific geographic locations where their mark is being used in commerce.
Of course, no clearance search is perfect - so even if a proper clearance search is commissioned you can still run into the above problems, although the probability of those problems is reduced; and you may be entitled to rely upon the clearance opinion in that if you are found liable for trademark infringement, it may be mitigated down to innocent infringement with lower damages, because you did in fact act in good faith an attempt to properly clear use before adopting a given mark.
So often, the costs associated with commissioning a proper clearance search make good business sense in comparison to very large costs that can stem from a mark holder with superior rights coming after you.
Federal registrations are for interstate commerce, while state trademarks protect intrastate use. If you are not going to use a mark outside of California, you will only be able to obtain a CA trademark registration or rely on your state rights. However, you must ensure that you have exclusive right to use it which will take into account Federal registration and use by others in your home state.
Having done a search and having done an adequate search are two different things. When you did the USPTO search did you, for example, think of all the spelling and other variants of a potentially confusing federal mark? The Internet has made it possible for those untrained in performing and evaluating searches to think they have solved a problem when in fact they may have not done so. If your mark has potential value to you sufficient to justify filing a federal registration, then is it not worth what is known as a full U.S. availability search to see what potentially confusing marks are out there? And is it not worth paying someone with expertise to evaluate the search in terms of your proposed trademark? Although the trademark search will be somewhat costly, it will not be unreasonably so. And you can have the results printed and sent you and your attorney to have not only as evidence of your due diligence but also as evidence of what a professional search firm could have found, evidence that could be invaluable if someone later claims, falsely or truthfully, that they were using a confusingly similar mark prior to you. And having a trademark attorney place and evaluate the search and guide your application process will likewise be worth more to you than the dollar savings of not using a skilled attorney. The USPTO application process consists of an online form, but how the form is filled-in is the important thing, and there are pitfalls in doing the process yourself or with the assistance of a non-trademark attorney. Please do yourself a favor and treat this business problem with the respect it deserves by utilizing appropriate professional assistance.
You are doing yourself a disservice by searching TESS and a state database, if it is available. I reccomend that you retain an experienced trademark attorney who would order a full search of all trademark and many business, state and Internet databases an D provide a clearance having a much more complete view of the landscape.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
You received some good insights. The short answer is yes, you can search state centric TM databases, but I would really caution against conducting your own clearance for two very important reasons: 1) unless you understand exactly how to search, your search will be far inferior to that of a professional and 2) the critical component is in the analysis, this is where the expertise and know-how comes into play. Who cares how well you search if you really are not fully understanding how to evaluate what you see. Trademark law is not intuitive like many providers of quickie services would have their unsophisticated markets believe. As an example, even though I am perfectly capable of reading an instruction manual, I still do not work on my own auto transmission.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Our Rating is calculated using information the lawyer has included on their profile in addition to the information we collect from state bar associations and other organizations that license legal professionals. Attorneys who claim their profiles and provide Avvo with more information tend to have a higher rating than those who do not.
Years licensed, work experience, education
Peer endorsements, associations, awards
Publications, speaking engagements