Would you submit a job application without first researching the company? In the same way, you shouldn’t file a trademark application without first researching the process. Understanding the steps involved will make the process much smoother, giving you an easier, and cheaper, path to a federally registered trademark.
Why should you conduct trademark research?
The United States Patent and Trademark Office (USPTO) does not guarantee approval just because you filled out and submitted an application. Attorneys at the USPTO are thorough in their examination of new trademarks. They can refuse or deny applications for a number of reasons.
According to the USPTO, these are the most common reasons why they refuse applications:
- Likely to cause confusion with a mark in a registration or prior application
- Descriptive for the goods/services listed
- A primarily geographic term
- A surname
- Ornamental as applied to the goods.
Trademarks allow businesses the exclusive use of their brand names and logos, so the USPTO routinely rejects applications that can potentially cause confusion. If, for example, you were to submit a trademark application for a soft drink called Koka Cola, the USPTO wouldn’t think twice about rejecting your application.
While your name must not misrepresent your business, it also cannot be purely descriptive or generic. You could not, for instance, register a trademark for Burger Restaurant. It is generic and therefore purely descriptive of your service.
Geographic names and surnames, by themselves, are typically not eligible for trademarking either. They can, however, be used in a larger name. For instance, you may have trouble trademarking the phrase North America, but there is a pipe manufacturer called North American Pipe Corporation.
The last refusal, based on mere ornamentation, is the least common, but can still hold up your application. The USPTO uses the example of the slogan on a t-shirt. “I’m with stupid” might appear on the shirt, but it does not indicate the source of the t-shirt. It is considered ornamental, rather than identifying the source of the product.
Conduct a basic web search
Simple and familiar web tools, such as Google and Bing, serve as a good starting point for trademark research. Typing your intended mark into these tools will provide you with an array of current uses.
Tip: If your intended mark is a phrase, search it both with and without quotation marks.
If you intend to trademark a logo, you can also check that against existing logos in Google’s image search. Drag the photo into the search bar, and Google will return any images that appear similar. This is not an exact process, but it serves as a decent starting point.
You can also conduct similar basic searches on social media sites like Facebook and Twitter, but chances are if your mark already exists you’ll find it through Google or Bing.
Starting with Google or Bing provides a cheap and easy way verify whether someone is already using your mark. If you see that your mark is already in use, or a company uses a similar mark, you know that you may need to start over. Note that if you find no current uses of your mark, your work is not finished. Google is not the comprehensive database of registered trademarks or intellectual property. It just provides a useful and easy quick search you can do without a law firm or attorney.
Search the TESS database
If you found no use of your mark through traditional search engines, it’s time to search the registered trademark database. The USPTO maintains the Trademark Electronic Search System (TESS) for public use, so you can visit their website and start conducting trademark searches.
According to the USPTO, “the Trademark Electronic Search System (TESS) contains the records of active and inactive trademark registrations and applications, some of which could be found in the USPTO’s examination of your application to be grounds for refusing to register your mark, i.e., if the examining attorney determines that a ‘likelihood of confusion’ exists.”
The term “likelihood of confusion” is highly subjective, so your best bet is to conduct a comprehensive search of TESS. An experienced attorney can help you find all iterations of your intended mark to ensure that it does not fall into the “likelihood of confusion” trap.
If you do decide to use the TESS database on your own, keep in mind that some trademark owners with valid and protected trademark rights do not choose to register their marks with the USPTO. As such, it’s recommended that you also do research on state registrations and common law marks.
In addition to studying the TESS database results for similar or identical marks, it’s also important, according to the USPTO, that you “closely study the listed goods and/or services to determine possible relatedness.” This information can also affect whether the USPTO will approve your application.
If you are satisfied with the veracity of your research, it is time to start filling out the trademark application.
If you would prefer a more secure trademark filing with the U.S. Patent and Trademark Office, now is the time to consult a trademark attorney. Starting the research process yourself will provide the attorney with a good base of information. From there the attorney can conduct additional searches to ensure that your mark is indeed unique. Only after this due diligence is it time to file your application.