First Things First: Trademark Preliminary Screens

If any readers have ever gotten in touch with OG+S regarding a potential trademark application, we have likely mentioned the possibility of doing a “preliminary screen” for your mark. This process, sometimes also referred to as a “knockout search”, helps trademark applicants get a sense of the field before they apply. Here at OG+S, we are always happy to run such a screen (for a reasonable flat fee) for anyone considering applying for a trademark.  

In this post, I will discuss the topic of preliminary screens and their benefits—a topic I discuss with trademark clients often. I will share three reasons why having a preliminary screen done before you apply for a trademark is wise and worth your time and money.

Reason number one: you can pursue your trademark application with appropriate expectations. If a preliminary screen shows results indicating good odds for success in getting a registration, something of a friendly field, you can pursue your trademark application with more confidence; conversely, if the preliminary screen reveals an uncertain or narrow field, you can take the time to consider the strategy that will work best for you. The field of existing trademarks can be complex, with some marks able to co-exist, while others will face more of a fight from registered marks, which is why we sometimes refer to a “trademark ecosystem”. Understanding how your mark may be able to fit into this ecosystem is key to clear expectations and preparedness for an application—and can also help with the budgeting (see point three for more there).

Trademark searching can also be a complicated process for those unfamiliar with USPTO systems. Luckily, your trademark attorney is ready to look for potential conflicts or other issues and will know how to interpret the information they find. If the attorney has a chance to assess any risks involved in a potential trademark application through the preliminary search, they can give you a clearer sense of how the application process might go, or even the realities of continuing to use a mark on a common law basis through branding and development of the business.

Reason number two: you will have a better basis for a call or email exchange with your attorney regarding your trademark application. When you get in touch regarding a potential trademark, the attorney will always have questions to ask regarding the mark and the materials needed for the application. When the attorney is also able to run a preliminary screen before applying, they are able to develop a more informed perspective to share with you about the necessary information and materials. Thus, communication between you and the attorney can often be more efficient and direct once the attorney has a sense of the ecosystem for a trademark application.

Having a chance to do a preliminary search before a conversation about a potential trademark can also prime your attorney to talk about issues beyond conflicting marks; this research gives the attorney time to reflect on other potential pitfalls for the application, and only strengthens your conversation—often saving time and money, which brings me to the third benefit.

Reason number three: you might save money in the long run. After all, the need to be money-conscious in today’s economy is understandable. Though the screen itself requires a small fee, knowing in advance about a problematic ecosystem for a trademark application sometimes allows you to save money, not to mention a headache and wasted time. Instead of paying the USPTO the filing fees for a problematic application, as well as the costs for the attorney to defend the mark against pushback from the USPTO that may be insurmountable, you can save the money by finding out the issues before starting that process in the first place.

In addition to the money spent on a tricky trademark application, there is the consideration of the money spent on the company itself. For example, if your company name would have a hard time attaining a trademark registration, that might be because another company already has a claim to it. In that case, not only would you likely not get a trademark registration for the name, but you also might get a cease and desist and find yourself in a place where you might need to rebrand, having wasted the money you spent already. Knowing the trademark landscape can help make business decisions later in terms of budgeting, impending trademark application or not.

Overall, OG+S is all about efficiency and strategy. We look to the preliminary screens as an opportunity to inform and prepare clients before they choose to apply for any trademarks. If any readers are looking for assistance with these matters and might like to see the results of a preliminary screen for their potential trademarks, we would be more than happy to help. Thank you for reading.