Some principle considerations prior to filing a U.S. trademark application are the geographic scope of the rights and the availability of the mark.
Geographic Scope of U.S. Trademark Rights
Trademark protection is territorial, meaning that rights are confined to the country or geopolitical region in which a party’s mark was applied for and registered. In the United States, the rights granted by a federal registration extend only throughout the territory of the United States including: all fifty states, the District of Colombia, Guam, Puerto Rico, American Samoa, and the United States Virgin Islands and have no effect in a foreign country. Therefore, a party who is seeking to extend and protect their trademark in other countries must also apply for the mark in such countries in accordance with the requirements of that country or region.
Availability and Clearance
Trademarks serve as source identifiers, so they should be distinguishable from the trademarks of others to avoid confusion among consumers in relation to the goods and/or services to which they are applied. To determine whether a potential mark is available for registration and for use, it is advisable to conduct a pre-filing search in relevant databases for registered or unregistered (common law) trademarks that may conflict with a desired mark. Pre-filing search reports can guide the selection of appropriate marks and influence application strategies and can be tailored based on a client’s needs and budget. To conduct searches, we require: 1) the mark(s) of interest; 2) the actual goods and services of interest (not just the relevant class numbers); and 3) the name of the potential applicant.
Ladas & Parry offers different types of U.S. searches, including:
- cursory/screening/knockout search: summary opinions on screenings for near-identical words in federal registrations and applications;
- preliminary search: detailed opinions on screenings for highly similar words in federal registrations and applications; and
- full search: detailed opinions on specialist-provided extensive searches for similar words in federal and state registrations, and in common law sources.
Comparative availability analyses between multiple prospective marks, searches for similar designs and graphic elements, and searches in other jurisdictions are also available.