What's a basic or "knockout" search?
If you have ever filed a trademark application and spoken with a trademark attorney about it, you have probably heard the term "knockout search" or "basic search" used. A basic search is the first search that a trademark lawyer will perform to determine the availability of a proposed trademark for use in commerce by a client in connection with particular goods and services. The purpose of the basic search is to determine whether the mark in question is already being used by a third party in connection with the same or similar services. If it is, the proposed mark is "knocked out."
When performing a basic search, an experienced trademark attorney will search for the mark in question spelled different ways, check different character strings, prefixes, suffixes, similar sounding words, and words with similar meanings across a number of different classes of goods and services. The results of such a search are rarely ever simple. There may be a number of marks in the same field, which incorporate one or more of the same words found in the suggested mark. There may be identical marks used in connection with different, but related services, such as a sit down restaurant andcatering services. There may be a trademark holder in the field without an identical mark for similar services, but which aggressively files opposition proceedings against anyone who tries to register a certain word or symbol as a trademark. Rarely, if ever, does the absence of an exact match for the proposed trademark dictate whether or not that mark is clear for use.
Complicating matters is the distinction between common law use, and use in connection with an application to register a trademark with the PTO. There are situations where registration of a trademark with the PTO may not seem likely, but where a good faith use of a mark in commerce may still be made. Put another way, when applying for a trademark registration with the PTO, the determination as to the registrability of a trademark will be made by an Examining Attorney who works at the PTO. As further discussed in the section on Trademark Filings, an Examining Attorney will limit his or her inquiry of confusing similarity to a review of the description of goods or services in a registered mark versus the description of goods or services in a trademark application. The Examining Attorney will not consider how the marks are actually used in commerce, or the nature or extent of third party common law use ofthe same or similar marks in connection with the same or similar goods or services. As such, it is sometimes possible for a mark to be cleared for use without a recommendation that a trademark application also be filed.
After performing a basic search, a trademark attorney should present his or her findings on the registrability and the usability of the proposed trademark. Ultimately, the client decides whether to proceed to the next step in the process.
Contact us to get started.
Attorney consultation requests can be submitted by filling this form. One of our trademark attorneys will respond to inquiries directly. You may also call us at (800) 865-2901.
“ The trademark attorneys at Lewis & Lin are responsive, easy to work with, and fair! ”
— Harvey Moscot (CEO), Moscot NYC