Common Law v. Registered Trademarks
Most trademark searches perform “preliminary” or “knockout” searches for your trademark through the Trademark Electronic Search System (TESS) of the USPTO. This trademark search system is a powerful tool that will provide an experience researcher with a quality view of existing or applied for trademarks that a USPTO examiner might use against your application, should you apply to register your own. And, as far as your own application to register a trademark is concerned, the USPTO will only compare your application against registrations already within the register.
In other words, even if your competitor has a trademark search that is not registered or pending registration within the USPTO TESS database, there is almost nothing within the law that they can do to stop your application. And, because the trademark search database is publicly available, you or an experienced professional can quickly estimate your odds of success prior to even attempting to register your trademark search through an application. However, it is important to keep in mind that, even if your competitors do not have registered trademark rights they may nevertheless have acquired common law trademark rights.
Although a competitor’s common law trademark will not negatively impact your ability to register your trademark, should you choose to continue with an application, common law trademarks can be used by your competitors to narrow the locations or applications in which you might enforce or even use your trademark.The existence of common trademarks is why, despite many USPTO trademark searches showing a high likelihood of registration for your proposed mark, that our firm might nevertheless recommend that you reconsider your long-term plans to avoid expensive legal hurdles down the road.
At the very least, a quality trademark search will help you identify both registered and common law trademarks to enable your organization to consider your specific circumstances and make the best decision.