A trademark search is a common process where businesses look for new names to see if they are available or whether another business may already have rights to a similar name. Having a trademark attorney perform a federal trademark search is an important first step in naming your business and in protecting your brand. Conducting a search will help you avoid adopting and investing in a name that infringes upon the rights of others. A federal trademark search can also indicate whether your trademark is available for federal registration with the U.S. Patent & Trademark Office (USPTO). If the search reveals potential issues, you want the flexibility to be able to look into other potential names before investing in a name that may get you into trademark infringement trouble.
Avoiding Trademark Infringement
The “bare minimum” when it comes to trademarks should be doing a trademark search to make sure that you are not infringing upon someone else’s trademark. This is not just for their benefit. It also helps you to make sure that you avoid legal trouble. You may have heard the phrase “ignorance is no excuse” when it comes to other areas of the law. That certainly applies here, too. If you are sued for trademark infringement, you may have to close your business until you can re-brand under a new trademark. The cost of doing so will not be cheap. In fact, it could cost you your business altogether.
Searching for Conflicts
In addition to infringement issues, you want to conduct a search if you plan on filing a federal trademark application with the USPTO. Trademark applications are frequently rejected by the Trademark Office on the basis that the trademark is confusingly similar to a trademark that has already been registered. While it is possible to convince the Trademark Office that your mark is not really similar, this can be both difficult and expensive. Having a trademark attorney perform a federal trademark search before filing your application can give you a better idea as to whether your trademark application is likely to be successful.
All businesses should seek to obtain a federal trademark registration. There are many advantages to owning one. Businesses that register their trademarks have nation-wide rights to use their trademark. It also gives them a legal presumption of ownership of the mark. If the business owner ever decides to sell the business, the business will be more valuable if it comes with a registered trademark, since registration removes some of the risk for potential buyers.
When Should I Perform a Trademark Search?
The best time to perform a trademark search is actually before you adopt and use the trademark for your business. Unfortunately, many businesses do not contact a trademark attorney this early. They often call a trademark attorney only after they have settled on and invested in a name. Maybe they have purchased a domain for their website. Or they might have spent hundreds or thousands of dollars having logos, business cards, and marketing materials designed and printed. But what if the trademark they have chosen infringes upon someone else’s trademark rights? Then they have to either decide to re-brand and admit that this money was wasted, or continue to use the infringing mark. These are not great options.
If, on the other hand, you have an attorney perform a trademark search before settling on a name, you will be in a much better position. If the search turns up a conflicting mark, then you can try another name. That way, you’ve only spent a little money on the search, rather than invested heavily in a name that is unavailable. Once you find a name that is clear of any conflicts, then you can feel more comfortable investing in that name.
The “Knockout” Trademark Search
Before you hire a trademark attorney to conduct your trademark search, you can do your own basic search (called a “knockout search“). A knockout search checks for trademarks that present very obvious conflicts. You can go to the Trademarks page on the U.S. Patent & Trademark website and select “Trademark Search System.” Once you are on the search page, you will see that there is a search bar that works much like any other search bar you use. Type in your trademark and see what comes up.
You will know you have a potential issue if you see a trademark that is labeled “live” and appears similar to your trademark for products or services related to what your business will do. If you do find something like that, you may want to speak to an attorney, as your trademark may not be available and eligible for federal registration. The knockout trademark search is a good first step in reviewing the availability of your trademark for use and registration. However, it is no substitute for a comprehensive trademark search conducted by an experienced trademark attorney.
The Comprehensive Trademark Search
Clients often ask me why they should hire a trademark attorney to perform a professional trademark search. If the USPTO search system is available to everyone, why hire an attorney? The trademark search service that I provide is a more comprehensive search than what most people can do on their own. In other words, the search I conduct is a deeper dive. Of course, that is in addition to the many years of experience that I have in searching for confusingly similar trademarks. But I also use specialized software that has better search capabilities than the USPTO site. This software doesn’t just look for the identical marks that might be uncovered in a knockout search. It also checks for confusingly similar marks, marks with alternate spellings, foreign language equivalents, and other marks that could be problematic that wouldn’t be uncovered in a Google or USPTO trademark search.
Confusingly similar marks can be difficult to find. They may be similar because of spelling differences. For example, one mark might include the word WINGS with the traditional spelling, while another is W-Y-N-G-S, or W-I-N-G-Z. Marks can also be confusingly similar because of the use of synonyms. A mark that includes CHILDREN can be similar to another that instead uses KIDS, TYKES, TODDLERS, or BABIES. Having an attorney perform a trademark search can help uncover any confusingly similar marks. And you will want to find these marks, so that you do not waste time and money filing trademark applications that have little or no chance of success.
Conclusion
You should have a trademark attorney conduct a trademark search before you adopt, use, or try to register a trademark. A trademark attorney can give you an informed opinion of any risks that are likely if you file a trademark application. The trademark application process can include many obstacles that are difficult to overcome. But a good trademark search can make you aware of these in advance, and help you determine whether filing an application for your chosen mark makes sense.
Do You Need a Professional Trademark Search?
If you would like a trademark search report from an experienced trademark attorney, please feel free to 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.
