Things to Know Before Doing a Trademark Search

Registering a trademark takes time. If all goes well, you could have the entire process done within 10-12 months. But if you make mistakes during the application phase, it could take longer than a year to complete. This is why the United States Patent and Trademark Office (USPTO) encourages applicants to work with trademark attorneys.

Your business mark could be a name, a logo, a slogan, or something else entirely. For instance, in 2009, Boise State University successfully trademarked the color blue used on the artificial turf in their football stadium. (Check out our article for more on trademarked colors.)

But regardless of what you want to trademark, the first step towards registering your mark is to perform a trademark search. It is possible to handle the search yourself, but you’ll want to be aware of the following six crucial items before beginning your trademark search:

1. A Successful Trademark Search Doesn’t Guarantee Registration

The USPTO does not award trademarks solely based on availability. Even if your trademark search does not reveal any identical or similar existing trademarks, there is still a chance that the USPTO may turn down your application on different grounds.

For instance, in 2009, Harley Davidson lost its bid to trademark the sound of its engine because other companies complained that their engines sounded the same – even though a trademark search would have revealed no competing marks. In 2010, Sarah Palin’s application to trademark her name was preliminarily rejected because she forgot to add her signature.

2. Trademark Searches Can Be Done Online

Thanks to the Internet, you don’t need to go far to conduct a trademark search. You can conduct a search online using the Trademark Electronic Search System (TESS). In addition to searching the database of registered trademarks, TESS also allows you to review a list of pending trademark applications.

However, it is important to note that there are certain trademarks that may not be revealed by a TESS search. Some business owners with legally protected trademarks may choose not to register their marks with the USPTO. To ensure that you cover all of your bases, it is best to consult a trademark attorney.

3. Trademark Registrations are Localized to Jurisdictions

A common mistake is to assume that all trademark registrations are binding internationally. They are not. Registering your trademark in the U.S. does not mean that it will be protected in every other country. As such, there may be several companies in different parts of the world that share your trademark, though a search of the U.S. listings would not uncover them. This is why attorneys advise against using search engines to check for availability.

A Google search may reveal foreign companies that have trademarks similar to your own. Because those companies may not be registered in the U.S., there may be little to stop you from registering the trademark. However, there are several international agreements in place—such as the Madrid Protocol—that allow you to register your trademark in multiple countries. This allows you to protect your brand internationally.

Of course, if you plan to apply for trademarks in non-U.S. countries, your trademark search must also involve filtering through those countries’ own registration databases.

4. Your Trademark Search Must Include Similar Marks

It is not enough to just search for identical trademarks. To conduct a complete trademark search, you should also search for marks that appear to be “similar” to your proposed mark. The rules surrounding similar marks are complex, as the process involves comparing and studying the goods and services being offered by different companies to see if they are related.

In 2010, for example, Facebook’s trademark application for the word “Face” was approved for publication by the USPTO.  However, the trademark only applies to companies offering telecommunication services. So if you had a construction company called BoldFace, you would be fine. However, if you attempted to trademark a mobile app called FaceOff, there may be a conflict with Facebook’s trademark for “Face”.

Unfortunately, TESS does not offer much guidance in this area, and the only time the USPTO volunteers an opinion is when it weighs in on the validity of your application – which may take as long as 4-6 months. The best way to ensure that your search takes similar marks into consideration appropriately is to work with a skilled legal professional familiar with trademark laws.

5. Trademark Searches are Different for Designs

If your trademark incorporates a certain design element, such as a logo or other marketing graphic, then your search must include a design mark search. This type of search is different from the standard search options.

To assist users, the USPTO offers a design code manual. It is comprehensive, covering all of the different design categories under which a graphic can be registered. In total, there are 29 different categories. Get to know these categories to be sure that your mark will be protected.

6. Trademark Application Fees Cannot Be Refunded

After you file your application, there’s no turning back. If the USPTO finds a mark that is confusingly similar to yours, the Trademark Office will very likely issue a refusal against your application. It’s that simple. Although there are situations where you may appeal a rejected application, the success rate of such appeals is statistically not in the applicant’s favor.

More importantly, application fees are not refunded, meaning that you will likely have to start all over again with a new payment. Because of this, it’s a far better idea to do your due diligence before proceeding with an application. This will save you both time and money.

Next Steps

Once you’ve understood the six points we’ve just covered, the next step is to do your trademark search. If you want to try and do this yourself, check out our guide on how to do a trademark search. If you’d rather look into having this done for you, take a look at our explanation of the trademark search portion of our services.

Understanding Your Results

A trademark search is supposed to help you determine if it is safe to proceed with a particular trademark application. Unfortunately, even though the search process may seem easy, many people find it difficult to interpret the results correctly.

The results of a trademark search may have nuances and legal issues that an average businessperson may not understand. An easy way to remedy this is to have a legal expert like trademark attorney Xavier Morales review the results for you. With the help of your attorney’s opinion, you’ll find yourself in a far better position to move forward with your trademark registration.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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