Stage 1: Preliminary Stage

In the preliminary stage, the first step is to determine that it is a registered trademark that is needed. Having done so, ‘knock-out’ searches should be conducted to eliminate trademarks with obvious problems and to identify ‘strong’ trademark candidates. This is often done by conducting pre-screens of the trademark registry.

In the preliminary screening stage, the purpose is to identify a ‘strong’ trademark and search for any ‘knock-out’ trademarks. Quick and inexpensive searches should be conducted that will eliminate proposed trademarks that obviously wouldn’t be available. This is often done by searching the trademark registry. You can access many databases at no charge on the Internet, including the Canadian and U.S. Registered Trademark Databases.

Stage 2: Searches and Opinion

Once through the preliminary screening, further and more extensive searches should be conducted. For example, searches should be conducted for not only exact matches, but also similar-sounding or similar-looking marks. For this reason, special algorithms are often used to conduct these searches. Searches should also be focused according to the field of trade that the trademark will apply to.

It is not a legal requirement that any searches be done before you use a trademark or apply for a trademark registration. However, it is very advisable.

Comprehensive Screening

In this step, a candidate for registration that has passed the preliminary screening will be investigated in greater detail. This involves more detailed searches of database registries, and may also include ‘common-law’ searches. Once again, you can access some of the registries yourself on line. We offer services that provide comprehensive searches based on registry and ‘common-law’ sources such as business registries, business journals, newspapers, etc. For more information, see our services.

Further Investigation

If any of the searches turn up names that should be investigated further, then other sources such as corporate name and business name databases may have to be consulted. Even if another mark is exactly the same as yours, if the line of business is sufficiently different then your mark may be registrable.

Deciding to Apply and Opinions

Once all the searches and investigations have been been done, it’s time to decide what the chances of registration are and whether you want to go forward. If you have a registered trademark agent working for you, this is the time when you will receive the official Opinion as to registrability.