Selecting the perfect name for your company is a huge undertaking and a feat worth celebrating. But before you spend time and money on creating a website, designing a logo, and running ad campaigns, you’ll want to ensure that your desired trademark is still up for grabs. This should be a top priority for any new company, as the success of your business hinges on you building brand recognition as quickly as possible.
Fortunately, conducting a trademark search is a relatively painless process. The United States Patent and Trademark Office (USPTO) has a free online search tool that allows you to research and identify trademarks that might be deemed too similar to your own. This is a good starting point because you might immediately see that your trademark is not available. However, before proceeding we recommend that you have a trademark attorney perform a search on your behalf in order to ensure you don’t miss anything that might harm your business.
What is a Trademark?
A trademark is a word, symbol, logo, or design that serves to identify the source of goods and distinguish the products from other manufacturers. A service mark has a similar definition, only it applies to services offered, and not goods. A trademark does not have to be federally registered in order to receive some degree of protection since common law rights may apply. However, registering your trademark offers several legal advantages should an infringement issue arise. Additionally, registering your trademark sends a signal that you take the protection of your brand seriously. This might deter other potential infringing parties from misusing your trademark and causing irreparable harm to your company’s reputation.
Conducting a Trademark Search
The USPTO makes the process of performing a trademark search fairly simple. The Trademark Electronic Search System, or TESS, is a free online tool that allows you to search the register of all active and inactive trademarks. By conducting a trademark search, you will be able to spot problems you might have with registration before investing the time and money into a trademark application.
To conduct the trademark search, you will need to know the products or services being sold in conjunction with the trademark in question. You could potentially have success registering an existing trademark if the industry is far enough removed from your own. For example, a hair product line and a used car dealership could theoretically both register the same trademark “Curly Q’s,” as consumers are unlikely to assume that styling cream and vehicles are coming from the same source.
It’s important to note that a trademark doesn’t have to be identical to your own to cause likelihood of confusion. If consumers could reasonably confuse your trademark with somebody else’s, they don’t have to be exactly the same. The way the trademarks sound, look, or are spelled can all be different, yet consumer confusion can still occur.
How to Broaden Your Search
To avoid any likelihood of confusion, it’s a good idea to broaden your trademark search beyond the exact phrasing of your desired trademark in order to spot any potential infringement issues. Below are some common methods for identifying possible problems with your trademark registration via the search engine tool.
- Watch for special characters: IWhen searching the trademark database, even blank spaces matter. So for example a search for BLACKDOG may not reveal a previously filed application for BLACK DOG.
- Identify keywords: If your desired trademark consists of a phrase, don’t just type in the exact word order and hit the enter key. Pull out the keywords and search variations on the trademark, as well as the word stems found in your trademark.
- Sound it out: You could run into trouble if your trademark sounds too similar to an existing brand, even if the spelling and design are completely different from your own. Search for homonyms of your trademark, and similar phonetic sounds.
- Search for meaning: Your desired trademark could conflict with an existing trademark if the definition of the phrase is too similar. Simply translating an existing trademark into a different language won’t be enough to avoid infringement. For example, using “Gioguaro,” the Italian word for “Jaguar” in relation to the sale of cars would still likely be an infringement of the car company’s registered trademark. Similarly, if two English words are synonymous, you might have difficulty successfully registering depending on how closely related the industries are.
- Be on the lookout for similar commercial impressions: Your trademark application might be rejected if you incorporate similar design or aesthetic choices in your company. So a shoe store called “Fruities,” may run into problems if another shoe store is called “Lemons” since consumers might reasonably assume the shoe stores are connected in some way.
Trying to close all possible loopholes can be a difficult undertaking especially if you are searching trademarks for the first time. This is why using an experienced trademark attorney to do a trademark search is the best option. A trademark attorney will have years of experience searching trademarks and can do so cost effectively. The cost to do so may be small compared to a lawsuit in the future, so having a trademark attorney to perform the search and file your application may save time and money in the end.
Additional Search Engine Tools
In addition to using TESS, you would also be well advised to perform a simple Google search which may alert you if your desired trademark is currently being used commercially. If you spot the trademark in use but it is not federally registered, you could still be in violation of their trademark rights if you pursue registration on the trademark.
It’s also a good idea to search domain names to see if there is a website associated with your desired trademark. You can use an online tool like ICANN.org to search for registered domain names.
What Constitutes a Strong Trademark?
Your trademark search is more likely to yield positive results if you have a strong and unusual trademark. If you begin trademark registration with a strong trademark, the process is more likely to go smoothly going forward and result in fewer time delays. Generally, strong trademarks are categorized into three groups.
- Fanciful: Fanciful trademarks are generally considered the strongest kind of trademark. They are words or phrases that exist solely to be used as a trademark. Among the most famous fanciful trademarks are “Xerox,” “Exxon,” and “Clorox.”
- Arbitrary: An arbitrary trademark uses a word or device that has no relation to the types of goods or services being sold. The most well known examples of this kind of trademark are “Apple” as an international technology company and “Camel” as a cigarette company.
- Suggestive: Suggestive trademarks require some thought on the side of the consumer as to the relationship between the trademark and the types of goods or services. An example of this type of trademark would be Microsoft, which is suggestive of software and microcomputers. Suggestive trademarks can be powerful marketing tools, as the trademark links distinct words and phrases in the consumer’s mind to a company.
Trademarks that are too generic or descriptive are considered the weakest kinds of trademarks. There is a higher degree of difficulty in registering these types of trademarks. Trademarks with proper names, like “Sal’s Sandwich Shoppe” are included under the umbrella of a descriptive trademark. Your trademark search will find fewer conflicting trademarks if you utilize a strong trademark.
Next Steps After Conducting a Trademark Search
If you have conducted a thorough trademark search and are satisfied with the results, your next step will be to file an application for registration. This requires a registration fee and basic information about the desired trademark and its use. The application must specify the types of goods and services that you plan to sell in conjunction with your proposed trademark. Typically, the soonest that we hear back from the trademark office after filing is about 4 months. At that time, we will either be alerted about a problem with the application or the trademark will be published for opposition. At this stage, other trademark owners are able to file a trademark opposition if they believe your trademark constitutes infringement.
Once your trademark is successfully registered, you will be protected as long as you continue to use the trademark in commerce. This will require filing a renewal prior to year six and then every ten years after registration.
Monitoring your trademark after registration is largely your responsibility. You should act swiftly to every case of infringement you notice, and consult your legal counsel immediately after an unauthorized usage. Your first step will likely be to send a cease and desist letter to the infringing party. If the cease and desist letter is sent by a trademark attorney, the letter itself is usually effective in halting the infringement.
Avoiding Trademark Infringement
Trademark infringement involves the unauthorized use of a protected trademark. Any use that can cause confusion with a pre-existing trademark can lead to an infringement claim. So filing a trademark application without first doing a trademark search could be the first step toward infringement. Before spending any time or money on a trademark, it is highly advisable to have a trademark attorney perform a trademark search.