Clients frequently ask me to perform a “knock-out” search to determine the availability of their desired trademark or trademarks. A knock-out search typically refers to a search that is conducted by an attorney and is limited to searching the USPTO website (and maybe some googling to find some common law uses). Clients like knock-out searches because they’re generally cheaper than using a third-party search service like CompuMark or Corsearch. That said, a knock-out search is not nearly as comprehensive as a search conducted by a third-party search service. Results of knock-out searches are also subject to the following notable limitations, among others:
The databases relied-on for knockout searches are not always up to date. Entries in the databases relied-on for knockout searches are often delayed. This delay creates a risk that the searched-for trademark may conflict with a filed application that did not show up in the USPTO database or supplemental databases at the time of the search.
Conflicts from meaning are difficult to anticipate. Marks that look different from one another may nonetheless conflict if they convey a similar commercial impression. For example, USPTO official guidance indicates that marks like “lupo” (which means “Wolf” when translated into English) and “wolf”, although appearing completely different, could conflict because they have identical meaning. Similarly, the words “City woman” and “city girl” could conflict because they convey a “similar general meaning and produce the same mental reaction.” Your average knock-out search won’t turn up these types of conflicts.
Conflicts from phonetic equivalency are usually outside the scope of a knock-out search. Marks that look different from one another may nonetheless be conflicting if they sound the same. For example, an application for “QUICKSTART” might be denied if the mark “KWIXTART” was previously registered. Knock-out searches usually rely on the exact letters that clients give us, so they won’t pick up on conflicts from phonetic equivalency.
Foreign priority applications could be an issue. Applicants of many foreign countries are permitted to file a corresponding United States trademark application within six months of their foreign filing date and receive as a priority date their date of foreign filing. These foreign-priority marks are outside the scope of a knock-out search.
Common law trademark uses and state registrations may limit scope. Trademarks need not be registered with the USPTO or listed anywhere for them to be enforceable at common law. Additionally, many states have their own registrations for marks used within those states. Although a bit of googling may help minimize the risk of unforeseen common law marks and marks registered with state agencies, it’s extremely difficult to eliminate the possibility of an unforeseen common law use of a mark by a third party.
Likelihood of Confusion is a subjective analysis. The question of whether one mark infringes on or dilutes another mark is a subjective analysis made by human beings, whether it be a trademark examiner or trier of fact in the course of litigation. Examiners reach their conclusions after weighing a number of factors, not all of which can be judged using the search methods that attorneys use in a knock-out search.
To sum up, a knock-out search can be a great tool for determining the availability of a trademark, but it’s subject to some risks. For more information, get in touch with me or Ashley.
By Alex Hecker