The first step, in the typical registration process of a trademark, is conducting a trademark search. A trademark search is a search of various trademark databases for the purpose of identifying identical or potentially similar/conflicting trademarks, their status, and their owners. The reliability of the trademark search results depends on the number and the quality of the databases searched, and on the search techniques used (wild cards, Boolean operators, phonetic searches, etc).
Is a trademark search needed? For most businesses, whether they are for-profit or non-profit, the answer is yes. It is wise to decide to invest in a business name, product or service name (or logo) only after you have a comfortable degree of certainty that the name or the logo is yours. Or at least, you should know the trademark risk you assume, before spending money and other resources with the registration of a particular trademark and its promotion through marketing.
What's the risk of not conducting a trademark search? That is what is called trademark risk. Trademark risk is the risk that someone else already applied for, or registered the same or a similar trademark, which may result in the registration being denied by the USPTO and the loss of the filing fees, among other things. In addition, it is the risk that someone else can claim rights in your trademark, or even worse, that someone else can claim superior rights to yours. If someone else can claim rights in your trademark, obviously your trademark is a weak mark. Furthermore, if someone else has begun using the trademark before you did, he is a senior user, and therefore, he may have superior rights in the trademark. A senior user may force you to stop using the trademark, and may sue you for trademark infringement. This is especially true when the senior user has the financial means to do so (e.g., a large corporation, etc).
Therefore, a trademark search should be conducted, preferably, before starting to use the trademark in commerce or before applying for registration, whichever occurs first. The scope of the search depends primarily on the budget available to the trademark owner. In other words, the scope of the search is a question of how much security the trademark owner can buy upfront.
The results of the trademark search are analyzed by a trademark attorney and in the opinion letter the registrability of the trademark is assessed so that the applicant can make an informed decision whether or not to proceed with registration.
