What is a Trademark Knockout Search?

You may think that you have found the perfect new trademark to begin building your brand. But before you invest the time and expense of building your brand, an essential step is to make sure your trademark is actually available to use. This is when a so-called trademark “knockout search” comes into play as an essential tool to minimize your long-term risk. If you haven’t heard this term before, the goal of a knockout search is to identify any obvious conflicts or problems with your potential new trademark. Without conducting a trademark search, you risk infringing on someone else’s trademark rights, which could result in you being forced to stop using a name into which you may have invested significant time and resources. A knockout search refers to a fairly quick and limited search, to identify any obvious third-party trademark registrations that “knock out” your proposed trademark.

Knockout searches have limits. For example, they will not reveal trademarks based only on common law rights, i.e., an unregistered trademark that has rights based on its everyday use in the marketplace. Despite the limitations, carrying out a knockout search prior to adopting a trademark is highly advised – it is a cost-effective way to analyze the risk of using a potential name as a trademark before making significant investments in a trademark that may not have a legitimate chance of registering or infringes on a third-party’s senior trademark rights.

Typically, a knockout search is performed in a way to review all pending federal trademark applications, live trademark registrations, and abandoned trademarks on file with the US Patent and Trademark Office. Some firms supplement a knockout search with a cursory search of Google. However, a knockout search does not involve a search of phonetically similar marks, common law marks (unless they show up on a cursory Google search), or international filings. Having an experienced trademark attorney perform your knockout search is recommended, as they can provide further analysis of all the results and provide recommendations on whether to proceed with your proposed trademark based on a risk analysis.

Kronenberger Rosenfeld regularly conducts knockout searches, provides strategic advice on how and when to register clients’ trademarks, and handles all filings and proceedings on behalf of clients at the US Patent and Trademark Office. If you are considering adopting a trademark for a new product, we’d be happy to help with a knockout search and strategic advice on your proposed trademark.