Before You Name Your Brand: What a Trademark Knockout Search Actually Does

Entrepreneurs · Brand Creators · Show Creators

The moment you feel you should start protecting your brand name to claim it exclusively from others or to prevent infringement, you should consider registering your trademark (name or logo) for federal protection.  Before you name your brand, you should know exactly what a trademark search actually does.  While you can dive down the USPTO Trademark Database yourself (which I recommend you do for directly infringing marks and any other important takeaways), it’s important to have an attorney help identify conflicting marks or other issues that are non-obvious.  This is especially helpful for similar, but not identical marks and searches across associated classes of goods and services.

A knockout search is an initial, targeted check for the most obvious conflicts and designed to identify both identical or similar marks already registered or pending in your class of goods or services. It’s not the final word on whether a name is clear, but it’s the first initial phase to a full clearance of your proposed mark to confidently move forward or to do a proper risk assessment for moving your application forward.  It’s designed to catch the obvious or significant conflicts before naturally moving to a deeper comprehensive search.  This 2-phase clearance process can help save you time and money if there are barriers to moving forward and also allows us to provide you legal guidance on your trademark and application strategy.

What A Knockout Search Actually Does

A knockout search pulls the USPTO’s federal trademark database and looks for marks that are the same or close enough to cause a problem. For near matches, this means flagging alternate or stylized spellings, similar sounding marks, marks that share meaning or visual elements, and importantly, any marks in the same or associated classes that might leave a confusing commercial impression.  Trademark law is designed to protect consumers so that last one is important.

This is a screening step often accompanied with a short opinion letter or consultation depending on client preference, budget, and circumstance.  Sometimes that consultation is to explain why a mark has a low likelihood of a clean application and advise on alternative strategies.  

If there’s an obvious, direct conflict that is an issue, you’ll have saved yourself from building a brand around a name you’d have to abandon later.  The goal is then to save you from any sunk costs (including unnecessary legal or business fees) and re-direct you towards more helpful services.  

What A Knockout Search Doesn’t Do

A knockout search doesn’t catch common law issues — trademarks that are in active use but never federally registered, issues with state-level registrations, or marks throughout online marketplaces.  It’s designed to catch obvious marks that are identical or similar in commercial impression,but is a limited search by nature trading off a deeper search for one with more immediate feedback and purpose.  We always include a brief Google search of your mark to spot any loud common law marks that might be an issue although not all firms do this.  

A knockout search is not intended to include a full likelihood of confusion analysis with any given conflicting mark and doesn’t tell you with certainty whether your mark is registrable. That’s what the comprehensive search of the trademark clearance process is for.  Still, a knockout search can be a strong leading indicator of the likelihood of a successful trademark application.  Knockout searches with little to no issues often move through the comprehensive search quicker.  This makes sense economically since established competition is likely to at least have a presence somewhere. 

Read our Trademark Application FAQ post here 

Why Timing Matters

Ideally, you should run a knockout search before you commit to a name or investing significant startup costs into a name.  In some cases, if you’re doing it right, you can rebrand away from a bad option without significant cost – it depends on how early you run a search for conflicting names!

If you’re exploring names or creating product lines for a company, the cost of a knockout search can be an effective insurance to ensure you can claim rights to a brand name now or in the future.  You can then decide whether to file a 1(b) ITU (intent-to-use) application that allows you to claim the name while buying time to file an actual proof of use-in-commerce.  This is one way companies can protect names that are in development for up to three years that are not yet released to market.

What Comes Next (After Your Knockout Search)

A clean knockout search is a green light to move to the next step – a comprehensive search.  The comprehensive search goes deeper into common law conflicts, state registrations, and likelihood-of-confusion similarity analysis before you file.  You of course wouldn’t move forward to a comprehensive search if your knockout search doesn’t justify it.

See our post about USPTO Application Office Actions and what to expect

Naming a brand, a product line, or a company? A knockout search is a quick first step — and it’s a lot cheaper than finding out after the fact that the name isn’t yours to keep.