How to Knockout Competing Brands Before the Fighting Starts
What is a Knockout Search?
A “Knockout Search” a preliminary search for previously registered trademarks, identical or highly similar to yours that may prevent you from spending money on a lost legal battle. They are important tools for managing your intellectual property spend by making it less likely that:
you will waste time and money building an infringing brand, and
a USPTO trademark examiner (“examining attorney”) will reject your application by arguing that your desired mark is confusingly similar to another registration.
Knockout Searches, like patent searches, are therefore risk management tools that you can utilize to build defensible brand names that are less likely to result in trademark litigation.
How to Conduct a Knockout Search
A registered trademark is yours forever so long as you continue using the mark in commerce to identify your goods and services. For that reason, the USPTO databases contain papers associated with trademarks and trademark applications that go back hundreds of years. There are free and paid tools you can use to conduct your own searches. There also are many foreign and/or non-attorney companies offering those services.
A US intellectual property lawyer is better positioned to identify obvious risks of rejection, overcome obstacles to registration, and spot related issues. For example, during a Knockout Search, an intellectual property attorney may help you evaluate marks for goods or services that are closely related to your product and may limit your trademark rights, even though your marks are not identical, extending the range of your search. As a further example, an intellectual property attorney also may help you assess a number of potential marks, determine whether you can acquire a preferred domain name from a third party, and answer any questions you may have about patents held by a competing brand.
Knockout Searches are Smart Business Decisions
Whether you are an aspiring influencer, a start-up company, or an established business preparing to launch a new brand, avoiding conflicting trademark filings is the most cost effective path to registration.
Larger, more established entities often prefer to further minimize their risks by conducting more comprehensive trademark searches requiring many hours of research and thousands of dollars, all of which is justifiable if the projected revenues are big enough.
For smaller entities, start-ups, and individuals, even a limited Knockout Search may save time and money by identifying obvious conflicts and eliminating pre-registration risks. As a best practice, our team typically negotiate a fixed-free price in these instances to provide both sides with budget certainty and clear communications regarding comprehensiveness.
Start Early for Best Results
Knockout Searches often lower the risk of having to spend time and money on a rebranding project after months or years of time and money inadvertently building an infringing brand.
Imagine: you hire an ace branding firm, select a perfect name and logo, spend money on a premium domain name, start using the mark in commerce, and apply for registration - seemingly everything need to establish your brand. You then spend even more money building your website and social media presence during the months it takes for the USPTO to begin looking at your application, all while feeling confident about your efforts.
Then the USPTO returns a rejection alleging that your desired mark is confusingly similar to another mark, making it unlikely that you can continue using what feels like your brand, despite all of your previous efforts. Or even worse, you do not apply for registration and are served with a cease and desist letter that immediately threatens your previous efforts and requires you to start building a new brand from scratch.
These risks can often be avoided with a proper Knockout Search; preferably one conducted by legal counsel, during the brand building process, before you start spending money on domains and making similar investments so that you are best positioned to change course if needed.
Conclusion
Conducting a Knockout Search before you start building a brand, applying for registration, and/or making similar investments may help you maximize your trademark protections and avoid certain liabilities. For best results, you should hire an experienced intellectual property lawyer that will conduct a broad search and evaluate related risks.
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Thank You for Reading!
Matthew Leaper & Associates can help you resolve these and related issues in a professional, efficient manner. Our team knows how to effectively communicate with the USPTO, has extensive knowledge of its requirements and timeframes, and is well versed in all phases of the brand building process, making us well suited to help realize your trademark ambitions.
