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Searching
Before applying to register a trademark, it is usually advisable to conduct a registrability search to find out whether there is a prior registration, or application for registration, of the mark, or of a mark so similar, in association with similar wares (goods) or services, that it would prevent registration of the client's mark. The value of conducting such a search is that a prospective applicant can learn, for a relatively small expense, the chances of having the mark registered. If the chances are unfavourable, the expense of preparing and filing a trademark application can be avoided. However, a search cannot "guarantee" that a given trademark will in fact be registered.
The cost of a trademark search and written opinion on registrability prospects, is based primarily on the time spent, which varies according to the complexity of the search involved. Typically, a search and opinion for a one-word trademark for use in Canada costs about $600-800 (design mark searches tend to cost more). In cases of urgency, a priority search followed by a preliminary telephoned or telecopied report of the search results and opinion usually adds about $100 to the cost of the search. Fees can be higher if particulars of pertinent prior marks are retrieved from the database and analyzed. Typically, U.S. searches and opinions range from about $800 to $1,000 or more, depending upon the type of search made.
Usually, we begin with a computer-implemented search of a database that includes the publicly available records of registered trademarks and pending trademark applications maintained by the Canadian Trademarks Office (or U.S. Patent and Trademark Office, if a U.S. search has been requested). We are "on line" to both U.S. and Canadian databases, as well as many other foreign trademark databases. If, before completing the search, we find a clear obstacle for registration of the client's proposed trademark, then we usually discontinue the search so as to avoid unnecessary expense, and report the problem to the client.
Additional searching can be done in trade directories and the like. Such searching (often very expensive) is justified if the client intends to invest heavily in the promotion of the trademark, and cannot afford to have to abandon the chosen mark later if a conflict develops. As mentioned above, prior use of an unregistered mark can be a barrier to registration, or to use or enforcement of a registered trademark.
If the trademark will be used in any foreign countries, separate searches should be done for such countries, since trademark rights are territorial, and a mark found to be registrable in one country is not necessarily registrable or available for use elsewhere.
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