It happens so often. A client will come to me with a name ready for a trademark application. “Can you help me file this?” they ask. Of course I can. But there’s always a question I have to ask first.
“Have you searched to make sure that this mark isn’t confusingly similar to an existing one?”
This can earn me many blank stares. The client created this name from whole cloth. How could it possibly have any issues?
Many times the mark is free and clear. But there are so many instances where the mark, which seems so original to the client, might be considered confusingly similar to an existing trademark.
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What makes the issue more complex: the mark to which the client’s is potentially confusingly similar might not be federally registered.
Were I to file an application for that trademark, it might not get past the examination phase. For the client, that means a loss of fees — and that’s before they have to start over in creating a strong brand name.
Performing a comprehensive trademark search is an essential step in the trademark registration process. An experienced trademark attorney can perform the most comprehensive search and provide legal advice about filing an application for the intended mark.
Don’t want to hire an attorney just yet? You can lay the search groundwork yourself by learning how to conduct a trademark search with the following steps.
Search the TESS database
When conducting a trademark search, the first place you will want to look is the Trademark Electronic Search System (TESS). This is a complete database of federal trademark registrations. It includes:
- Currently registered trademarks
- Pending trademark applications
- Expired and abandoned trademarks
While the search interface isn’t totally intuitive, it does provide users with a number of ways to search trademarks. Most users will want to use the basic word mark search and use the default settings. This will search all of the words in your query. You can also choose to search for any word in your query (OR), or the exact match.
You can also search for marks themselves, or information related to marks. For instance, if you want to find out what trademarks a certain company owns, you can choose Owner Name and Address under the Field setting. But again, when you’re searching for marks that might conflict with yours, using the default Combined Word Mark will probably work best.
Tips for TESS
If you search for your exact mark and notice no conflicting entries, or even no entires at all, you are not necessarily in the clear. Just because another company doesn’t own that exact trademark doesn’t mean yours is free of possible infringement. If your mark is confusingly similar to any existing trademark, your application might not be approved.
1. Search for your mark in many different ways. For instance, search for the entire phrase with and without spaces. Check for any potential alternate spellings — substituting S for Z and other common language tricks. This will help you find any marks that don’t show up in a simple search of your name.
2. Make sure to use the OR search. If you wanted to trademark the term “DEFT COURIERS” and there was a registered trademark for “DEFT EXPRESS”, your mark might be considered confusingly similar. But you wouldn’t see the entry for “DEFT EXPRESS” if you performed an AND search.
3. Use a thesaurus and search for terms that are similar to yours. This is an extra precaution, but it might help shed some additional light on your mark.
4. Try a Free Form search. That will provide you with a few more options, so you can create many different lists of results that come up for your mark. You can search two different terms, in two separate fields. This tool will help ensure that your mark does not conflict with any registered trademark.
Perform Google searches
Many companies and individuals have trademark rights to names, even though they’re not registered with the USPTO. Once you use a mark to sell goods or services, you technically have trademark rights. Registering your trademark strengthens your rights, but you do have rights from the moment you sell a product or service in the marketplace.
So how can you know if another company is using the mark you want?
This is one place where a trademark attorney can give you an edge. Trademark attorneys like me have access to premium databases that keep track of common law trademarks. Even these can’t be perfect, but they do provide quick, quality, up-to-date information that can help an attorney better prepare your trademark application.
If you’re searching on your own, you have essentially two choices. You can pay for a premium trademark search with a database like Thompson Compumark (but at that point, why not just hire an attorney?). Alternatively, you can trust what you find in a Google search. It is by no means perfect. There are businesses that just won’t appear. Given the many iterations of the name you should search, it’s easy to miss a few along the way. But it’s one free way to perform a preliminary trademark search.
Tips for Google
1. Make use of the many query modifiers. You can start here to understand how to best use quotation marks. Make sure to check out the other operators, since they can help you craft many different queries that will help you get accurate results.
2. Experiment with quotation marks. Changing the placement of one can completely alter your search results. Try as many iterations as you can.
3. Search Google News. News articles might contain mentions of products or companies with marks that might be relevant to your search. Most of the time they’ll show up in a web search, but it’s best to be safe and try a Google News search as well.
4. Make sure to follow No. 1 from the TESS tips. That is the most important aspect of any trademark search.
Check domain name records
If you don’t have access to a common law trademark database, chances are you won’t find much beyond TESS and Google. But there is one more place you’ll want to search: domain names.
For starters, if you’re filing a trademark application you’ll probably want the corresponding domain name. Unfortunately, there’s not much you can do if someone already owns that domain name. Unless you used your mark in commerce before someone registered that domain name, you’ll have trouble getting it without paying the asking price.
In some cases, certain websites simply will not appear in Google searches. Google might have removed them from their index. The owner might choose to not appear in Google’s results. These factors make a domain search a good idea.
Tips for domain searches
1. Try a simple tool, such as Instant Domain Search. It will let you know the availability of the domain, plus WhoIs information. It also displays popular top-level domains; if the .com is taken, perhaps the .net is available.
2. Explore the domain. If the domain is essentially inactive — a site with a bunch of ads — chances are you won’t run into any trademark issues with that particular domain name owner. But if there is any kind of active site there, you might run into problems.
3. Again, follow Tip 1 from the TESS section. Search many different iterations of the domain. Thankfully, you don’t need to use any AND or OR modifiers.
4. Explore the WhoIs. If you find an inactive domain, you might be able to buy it for a decent price. It never hurts to ask.
Search is paramount
The most important step in the trademark registration process is the search. A poor search can render a spotless application moot. To file a trademark application without first performing a comprehensive search is pointless.
Put it this way: filing a trademark application without performing a comprehensive search, let alone not performing a search at all, is akin to buying a product without knowing anything about it beforehand. Sure, maybe it works out in your favor, but most of the time you’ll be left high and dry — and a little poorer.
Learning how to conduct a trademark search is the minimum effort. If you plan to file a trademark application, it is foolish to do so without it.