Before you start using a trademark or apply for the registration of a trademark, you should conduct certain searches as a precaution. Otherwise, you may be sued for trademark infringement and/or end up spending money on a trademark you aren’t legally entitled to use. Although such searches are neither 100% secure nor required before applying for a trademark registration,
they are highly recommended. These searches should cover both exact character matches and confusingly similar trademarks and business names. For the budget conscious, several important databases can be accessed free of charge on the Internet. Other basic searches are also available at a reasonable cost.
Important Search Factors
Registered & Unregistered Trademarks:
Trademarks (and business names) can be either registered or unregistered. A “registered” mark or name has been recorded on an official federal or provincial government database. Conversely, an “unregistered” trademark is not on such a registry.
Searches for registered trademarks or business names are not too difficult to do, as the databases are relatively limited. These searches are important, however, as the Trademark Examiner, who approves or rejects trademark applications, is generally only concerned with determining confusion based on such registered sources, notably the federal trademarks and corporations
registry and provincial corporate business names registries.
Searches for unregistered trademarks are more difficult to carry out, since they involve a far wider scope then just registries. Whether a trademark is registered or not, however, you may face legal action for trademark infringement if you attempt to use a trademark someone else is already using. Therefore searches outside the registries (often called “common-law” searches) are very advisable.
Exact Matches and Confusing Marks:
A search for an exact character match is relatively straightforward. The search for what in law are known as “confusing” trademarks or business names is much more difficult and time consuming, however, because many different variations must be reviewed and researched. A confusing trademark may look or sound like the one you are proposing, and if so, it is just as much an obstacle to your registration as if it were an exact match. For example, if you searched “Coca Cola,” you would quickly find it is trademarked. But if you were to search for an exact character match for “Koka Kola,” you may not find it on the trademark registry. Nevertheless, you would not be permitted to trademark or use “Koka Kola.” A search for confusing trademarks is therefore just as important as the search for exact matches. In fact, one of the most common reasons for rejection of an application is that the Trademark Examiner believes it
to be “confusing.”
As a result of these two factors, searches tend to fall into one of four categories:
Category 1: Exact Match/Registry Searches:
These searches concentrate on the federal and provincial government registries for trademarks and business names. For the do-it-yourselfer, most important public registries are now available on the Internet, for little or no charge. However, since you must connect to 10-12 different sites and search each one, these searches can take a great deal of time. If you wish to
pursue this option, the best source to begin with is the Canadian Intellectual Property Office (CIPO).
Another alternative is to order an exact character NUANS pre-screen or knock-out” search, which essentially searches these same databases plus several others as well. Given the amount of time it can save you, this is a good value. We offer a free NUANS prescreen with every price quote.
Category 2: Exact Match/Common-Law Searches:
Since a trademark does not have to be registered in order to be valid, you should search for unregistered trademarks as well. Your least expensive and first search for exact matches should be an Internet search.
Many different types and ranges of common-law searches are available, with the cost depending on the scope and nature of the search. The average price range is around $50 to $200 for a reasonable search of Canadian sources for a distinctive wordmark. However, as circumstances do vary, we ask that you provide us with further information before we can provide you with our price quote for common law searches.
Category 3: Confusing Match/Registry Searches:
A Category 1 knock-out or pre-screen search only searches exact matches. Searching for confusingly similar marks and names on the registries is also necessary. To do it yourself, you must return to each of the registries, and search each one individually for likely problems.
A time-saving alternative is to order a NUANS trademark search. This search includes both exact matches and confusing names at the same time, searching over 8 million records on federal and provincial databases in Canada according to special algorithms developed for this purpose.
Category 4: Confusing Mark/Common Law Searches:
This is usually the most difficult and expensive part of a search. If doing it on your own, the best way would be to search for potentially confusing trademarks or tradenames, using the Internet-accessible registry and non-registry sources. The search engines are probably your best bet.