This is the third in a series of introductory articles on the topic of trademark law. To view the second in the series please click on the Previous Page link at the bottom of this page.

If the availability of a mark is not properly investigated and evaluated before a company uses the mark and/or files an application for U.S. or foreign trademark registration of the mark, the company may very well find itself on the receiving end of trademark infringement lawsuit or a cease and desist letter from a third party who claims senior rights in the mark. Also, in response to the company’s application for federal registration of the mark, the company may receive a refusal to register from the U.S. Patent and Trademark Office ("USPTO"). Although there is no requirement under U.S. law that a company first conduct a trademark search, trademark counsel will normally recommend one because the expenses associated with defending a lawsuit will almost always far exceed the expenses of clearing and obtaining U.S. registration of the mark.

If the mark will be used in the U.S. only, the first type of search conducted is normally a preliminary, limited online search of the Federal Register, either using the USPTO trademark database or a commercial trademark database. When the company plans to use the proposed mark outside of the United States, there are a variety of online preliminary screening search options available. The preliminary search is inexpensive relative to the full trademark search (discussed in the next article in this series), and your company will avoid the expense of obtaining a full trademark search on the proposed mark if the proposed mark is "knocked out" based on the preliminary search results.

In the next installment of this series, we will discuss further details of the trademark search and clearance process, including the potential ramifications when a company commences use of a mark against the advice of its trademark counsel.

This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.

JORDEN BURT LLP is a law firm with a unique focus on financial services and a national reputation in high stakes litigation, financial regulation and product counseling.

To view the fourth in this series of introductory articles on the topic of trademark law please click on the Next Page link below.