Note: The pre-search review of trademark registrability is included in the flat-fee USPTO trademark registration package.
A pre-search review of trademark registrability is an initial legal assessment of a proposed trademark to determine whether it is likely to face objections during the registration process. This review focuses on legal issues related to the inherent registrability of the trademark, rather than conflicts with existing trademarks.
If you're already at the stage where you've chosen a trademark and want to register it with the USPTO, an analysis of the registrability of the trademark would be one of the first steps taken. As the name "pre-search review" implies, it's performed prior to the comprehensive search. This is because the search can involve extra costs and because an analysis of the search results can be time consuming. If there appears to be a serious issue with the inherent registrability of the trademark, you might not wish to proceed with a comprehensive search.
Ideally, you'll have this review done as early as possible in the branding process. Undertaking this review early on can save you significant time, money, and frustration later, when it's discovered that your rights to exclude others from using your trademark are limited to non-existent. This would have the potential to limit growth and make your business less attractive at a given valuation when negotiating an exit.
Here's a sample of the many possible issues that could affect a trademark’s registrability:
A trademark cannot be the common name of the goods or services it represents. If a term is generic, it cannot function as a source identifier because all businesses in the industry should be free to use it. For example, attempting to register "Baseball Bat" for a line of baseball bats or "Sports Team" for a baseball club would be refused outright.
A mark is merely descriptive if it immediately conveys a feature, characteristic, or quality of the product or service without requiring thought. For instance, "Home Run" for baseball bats would likely be considered merely descriptive because it describes a feature of the product, enabling users to hit home runs. While some descriptive marks can acquire distinctiveness over time, they are initially weak and difficult to protect.
A mark that primarily indicates the geographic origin of a product or service is considered geographically descriptive and is generally not registrable unless it has acquired distinctiveness. For example, "Cooperstown Sporting Goods" for baseball equipment manufactured in Cooperstown directly describes the product’s origin.
A geographically deceptively misdescriptive mark suggests a false connection to a location that could influence consumer perception. For example, "Cuban Sluggers" for baseball bats made outside of Cuba may mislead consumers and would likely be refused registration.
A trademark cannot consist of a functional feature of a product, as trademark law does not protect elements that give a product a competitive advantage. For example, if a brand attempts to register a unique bat handle shape that enhances grip or a specific pattern of perforations on a batting glove that improves ventilation, those features may be deemed functional and refused registration, notwithstanding that they otherwise identify the source of the product.
If a trademark is primarily a last name, such as "Rodriguez Baseball" for baseball coaching services, it may not be registrable unless it has acquired secondary meaning. This generally means the public must associate the surname with a specific business rather than just recognizing it as a common last name.
If a mark is used for decoration rather than as a source identifier, it is unlikely to qualify for registration. For example, the phrase "Swing for the Fences" on a baseball jersey in large stylized letters, without clear branding, would likely be seen as ornamental rather than a trademark.
A trademark must function as a source identifier rather than merely conveying information or acting as a general business name. For example, "Official Game Ball" on a baseball merely describes the product rather than distinguishing its source.
Whether you're still selecting a brand name or preparing to file an application, it's never too early to have due diligence done on your desired trademark. A thorough review, starting with a pre-search registrability assessment and followed by a comprehensive clearance search and analysis, helps confirm that your trademark is distinctive and legally protectable.
For businesses still in the branding phase, this process can prevent wasted time and resources by identifying potential legal obstacles early. If you’ve already chosen a trademark, conducting due diligence before filing reduces the risk of refusals, disputes, and costly rebranding. Taking these steps strengthens your brand’s foundation and gives you greater confidence in its long-term viability.
