Today’s blog post is kind of like a Mythbusters segment. I want to address a common misconception about trademark searches. The misconception is that doing a Secretary of State trademark search using the “corporation search” will prevent you from infringing upon someone else’s trademark rights. That is simply not true. But I still hear this from new business owners and even from attorneys that advise them. Let’s take a look at why this is wrong, and how using the Secretary of State’s corporation search does not replace the need for a true comprehensive trademark search.
Doing a Secretary of State Trademark Search Doesn’t Provide Reliable Information
When you use the corporation search on a Secretary of State’s website, you are generally looking for corporations, LLCs, and other business entities by name. That is why people often assume that a corporation has trademark rights to that name. But that is not necessarily the case.
You should think about the corporate name of a business as separate from their trademark. For example, you probably know Doctor’s Associates Inc. by their trademark, SUBWAY. So doing a Secretary of State corporation search for the term “Subway” would not necessarily reveal the SUBWAY trademark. You can see how this makes a Secretary of State trademark search pretty useless.
Also, because business entity names are not necessarily trademarks, you may see that several companies are registered under very similar names. That would not be possible if corporation names were all trademarks. For example, when I search “Green Thumb” with the Missouri Corporation search, I got over 20 hits. These include “Green Thumb Lawn Service, LLC” and “Green Thumb Hydroponics, LLC” as well as several other similar names. The Secretary of State does not look for confusingly similar names. I could incorporate under the name Green Thumb, Inc. tomorrow. But that would not tell me whether or not I could use GREEN THUMB as my trademark.
The Secretary of State Trademark Search Ignores Federal Trademark Applications & Registrations
Another reason that you do not want to rely on your Secretary of State’s corporation search is that it ignores the most important place that you need to search: the U.S. Patent & Trademark Office. A federal trademark registration gives the owner trademark rights across the United States. Limiting your search to the state level would obviously miss this.
Even if you do not intend to register your trademark with the Trademark Office, you still need to conduct a federal search. This is just to make sure that your trademark does not infringe upon someone else’s rights. Doing a quick Secretary of State trademark search completely ignores the federal trademark database, and puts you at risk of infringing.
Did You Conduct Your Trademark Search Through the Secretary of State’s Website?
If so, you still need to perform a proper search of the Trademark Office’s database. You can find out whether you may be infringing. You might also find that your trademark is available for registration. There are plenty of reasons to do a full search now, so please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
