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3 Steps to Perform a U.S. Trademark Search as a U.K.-Based Company

3 Steps to Perform a U.S. Trademark Search as a U.K.-Based Company

If you own a business based in the United Kingdom and you plan to register your trademark in the United States, consider the following steps needed to perform a comprehensive trademark search:

  1. Work with an experienced trademark attorney
  2. Conduct a comprehensive trademark search
  3. If a similar mark exists, make necessary changes to your own mark before submitting your application with the USPTO

1. Work with an Experienced Trademark Attorney

The United States Patent and Trademark Office, or USPTO, recently implemented one of its most significant policy changes in the last several years.  As of August 3rd, 2019, all foreign applicants must now be represented by a U.S. attorney when filing a federal trademark.  The USPTO considers the applicant ‘foreign’ if the business or individual has a permanent legal residence or principal place of business outside the U.S.  This means that if your business is based in the United Kingdom, you will need to secure an attorney in the United States before you submit your application.

The recent ruling applies to submitting the application, responding to Office Actions, and renewals.  At this time, it does not require you to work with an attorney for your trademark search.  There’s good reason, however, to work with your attorney through this stage of the registration process as well.  Your attorney will have access to a sophisticated software and expertise to conduct a thorough trademark search, not only looking at registered marks, but unregistered marks as well, to ensure that your mark is not in use before you submit your application with the USPTO.

2. Conduct a Comprehensive Trademark Search

It can be frustrating to learn your mark is already in use in the United States, but it is best to learn this before you’ve paid your fees and submitted your application with the USPTO.  Take the time to conduct a thorough search of the U.S. trademark database, looking not only for exact matches to your mark, but similar marks as well.  Anything that may cause a likelihood of confusion in the marketplace may be grounds for rejection from the USPTO.

You will likely see many websites offering free or discounted trademark searches, or you may even be considering a simple Google search to see if a similar mark is in use.  These may seem like cost-saving options at first, but they may end up costing you more in the long run.  The searches on these sites are not thorough, and they typically not conducted by experienced professionals either.  This means that a potential trademark match could be overlooked in the process, only to be discovered by the trademark examiner at the USTPO.  If this happens, you would end up spending more time and money to refile your application.  Working with a U.S. trademark attorney will provide peace of mind that a thorough and comprehensive search has been completed.

3. Make Necessary Changes Before Submitting to the USPTO

 Your U.S. based trademark attorney may discover one or more trademarks that may be confusingly similar.  If so, make changes to your trademark, with the help of your attorney, to avoid potential consumer confusion.  In some cases, only small changes need to be made to prevent a likelihood of confusion.  Unfortunately, trademark owners may sometimes need to start from scratch, creating a completely new mark for their U.S. product or service.  Do not submit your application with the USPTO until you feel confident a similar mark is not already in use.

US Trademark Searches

If you are a UK based business owner looking to register a trademark in the United States, you should first conduct a comprehensive trademark search.  This will alert you to any similar trademarks already in use within the U.S.  Avoid do-it-yourself legal websites, and work with a U.S. based attorney to conduct your trademark search.  Your attorney’s experience and access to sophisticated search software will ensure that all potential trademark matches are found.  If you are made aware of a possible match, make the necessary changes before submitting your trademark with the USPTO.  Contact a trademark attorney today to begin the process to register your UK trademark in the United States.

Author Bio:

Founder of Gerben Law Firm, PLLC, Josh Gerben is a trademark attorney whose full-service intellectual property law firm has secured over 5,000 trademarks for clients since 2008. The firm provides patent, copyright and trademark services for businesses internationally including the United Kingdom. Josh Gerbenis regularly quoted by national news outlets discussing trademark matters including CNN, NBC News, The New York Times, NPR, Forbes and The Wall Street Journal.

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