What is a “Reasonable Inquiry” and why is it important for protecting my brand?
by Michael C. Antone, IP Attorney, and Erin Kelly, Summer Associate
As a business executive considering using and registering a trademark in the United States to protect your brand, it is important to understand your responsibilities under the law. One critical step is conducting a “reasonable inquiry” before signing and submitting your US trademark application.
Under US law, specifically 37 C.F.R. § 11.18, any person submitting a trademark application must confirm that all statements made in the application are accurate “to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.” One of those statements is your declaration “that to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.” 37 C.F.R. § 2.33.
In non-legalese, this means that you need to check if someone else is already using the same or a similar trademark for the same or similar goods and services before you apply for a US TM registration. Failure to make a reasonable inquiry can result in the USPTO’s refusal to register your trademark or cancellation of your TM registration and possible liability for making false statements in the US TM application.
In the modern era, a reasonable inquiry generally includes one or more internet trademark searches (e.g., Google, Bing, DDG and relevant industry and social media sites) and a trademark search of the United States Patent and Trademark Office (USPTO) database. You will want to document your search results in case the question of reasonable inquiry arises and may want to work with a trademark attorney to guide you through the process.
The bottom line is that conducting a reasonable inquiry is an important part of protecting your brand and securing defensible rights in your trademark. Consulting with a trademark attorney can help you avoid costly missteps that could jeopardize trademark protection for your brand and your rights.
