Don’t overlook common-law trademark research

18 April, 2018

You have a new trademark candidate to research. So you search the official trademark office records to see if anyone else has already registered or applied for the mark. Good move.

But you’ve only done half the job.

If you only search trademark office records, you’re overlooking a major source of potential conflicts—conflicts that could create expensive headaches down the road.

You may also want to see if someone else is using that trademark in the marketplace. To do this, you perform what’s called a “common-lawsearch. Common-law sources include websites, industry publications, business directories, and other places where trademarks typically appear.

Why common law is critical

Why is common-law research so important? That’s because in some jurisdictions, brand owners can secure trademark rights simply by using their mark in commerce—even if they haven’t registered the mark with the trademark office. These are called “first to use” countries, while jurisdictions that require registration are called “first to file” countries. First to use countries include the United States, Australia, Canada, UK, and many others.

What if you’re only planning to do business in first to file jurisdictions, like some European countries? It may still be a good idea to search common-law sources. That’s because in today’s global marketplace, there’s no telling where your next business opportunity may present itself. Performing a comprehensive trademark search up front—including both trademark register and common-law sources—is often a wise insurance strategy that can help you avoid problems in the future.

Risky proposition

What kind of problems? If you use your trademark in a first to use country and someone else is already using the mark in the same or similar goods and services categories, you could be accused of trademark infringement. If the other party can establish “prior use,” you could be forced to abandon your trademark in that jurisdiction—losing whatever equity and good will are attached to your brand.

Uncommon coverage

What can you do to minimize that risk? Make sure that whatever trademark search solution you are using to research your trademark includes extensive coverage of common-law sources.

Note that common-law coverage can vary widely among the various do-it-yourself trademark search solutions. Before relying on a solution, do some digging and make sure it provides coverage of key trademark sources. This includes industry-specific websites, domain names, and even social media, which is rapidly growing as a source of trademark use.

Don’t overlook common-law research when evaluating the availability of a trademark for use in the marketplace. Covering your bases is just common sense.