Christine Lebron-Dykeman
McKee, Voorhees & Sease, P.L.C


The value of your company's trademarks will dramatically appreciate through successful use. And, unlike copyrights and patents that eventually expire, trademark rights can last indefinitely if the mark continues to perform a source-indicating function. Because trademarks are an appreciating asset with a potentially perpetual life, it is important to choose them carefully.

One crucial step in this decision-making process is the trademark search because although your trademark may eventually be one of the company's greatest assets, the adoption, use and registration of a trademark comes with risk. Indeed, in the United States last year, over 200,000 trademark registrations were applied for and even more trademarks were used without a registration. Moreover, trademark rights in the United States are acquired by use, not registration. Thus, if another entity is already using the mark your company is interested in registering, there is at least some risk that the mark will be rejected by the trademark examiner, opposed by the prior user, and/or subject to the filing of a trademark infringement suit.

Consequently, adopting or seeking to register a trademark or service mark, and before distributing a product or advertising a service under a mark, a trademark search should be undertaken. We recommend first conducting a low-cost, online search of federal records, followed by a full trademark search. Full trademark searches are comprehensive and will reveal whether another user or registrant of the same or a similar mark has established superior rights in the relevant field of goods or services. In particular, the full search is performed of United States federal and state registrations and applications, reported cases, common law uses and Internet usage. The trademark search is comparable in some respects to a real estate title search, because it reveals prior users who could prevent registration of the mark or assert a claim of trademark infringement. In sum, a trademark search of this type tends to give information regarding the chances of obtaining a federal trademark registration for the mark. It can also expose notorious uses that may represent infringement risks if the mark is adopted.

Quite simply, it would be very costly for your company to adopt a trademark and expend substantial resources marketing the same, only later to discover that another company has been using a similar trademark for several years past and now demands that your company cease all use of its mark. Always order a trademark search before adopting, using, or registering any trademark to avoid this type of scenario.


Christine Lebron-Dykeman is a trademark attorney and intellectual property litigator for the Des Moines-based firm of McKee, Voorhees & Sease, P.L.C. For more information, log on to www.ipmvs.com or call 515-288-3667.