The Benefits of a Comprehensive Federal Trademark Search
When forming a business or doing a brand refresh, a big step is choosing a name and a logo. Before finalizing your decision, however, it’s important to confirm the availability of the names or logos you plan to use. The best way to do this is to conduct a comprehensive trademark search.
What Is a Trademark Search?
A trademark search involves consulting state, federal, and international trademark databases to identify trademarks that are similar to your own. Because trademarks cannot be registered if they are confusingly similar, this is a necessary step to clear the availability of your chosen mark.
What Is the Trademark Electronic Search System?
The trademark electronic search system (TESS) is the USPTO database of all federally registered U.S. trademarks and applications. TESS allows you to conduct keyword searches for the different kinds of trademark. For design and composite marks that include graphical elements, TESS allows searches by design code. The USPTO offers 29 categories of design code that are searchable in TESS. Each code relates to a specific type of design, such as “geometric figures and solids” or “plants.”
The list of results shows the status and name of marks returned by the search. TESS search results link to the USPTO’s trademark status and document retrieval (TSDR) system. This allows you to see documents filed with each registration and more details regarding their status.
How to Do a Trademark Search
Familiarity with the TESS and TSDR systems is crucial to conducting a comprehensive trademark search. Hiring an attorney or professional familiar with these systems ensures that you get the most out of your search. Trademark search professionals also have access to more up-to-date databases and will better understand how to conduct an effective search.
There are several steps you should follow to conduct a comprehensive trademark search.
Step 1: Search TESS for Similar Trademarks
Since federal trademark registration comes with the most rights, check this database first. If you are registering a word mark, search for varying combinations of the words you use in your own mark. If your word mark contains two words, try searching for them in reverse order. Because trademark rights also apply to the out loud pronunciation of a mark, make sure to include searches for various phonetic spellings. For example, if your trademark uses the word “keyboard,” you might search for “keebord” as well and vice versa. A unique spelling does not automatically guarantee that your mark is eligible for registration.
If your trademark contains a design element, consult the USPTO Design Search Code Manual to find the design codes you should include in your search. Each design code covers an array of different design objects. For example, the category for furniture and plumbing covers beds, chairs, cradles, sinks, and tubs. Conducting multiple searches with different design codes can help you find all marks that may be confusingly similar to yours.
Step 2: Search State and International Databases
The World Intellectual Property Organization (WIPO) maintains a database of internationally registered trademarks. States also maintain their own trademark registers, usually with the secretary of state. Searching the state and WIPO databases will uncover any confusingly similar trademarks that are not registered with the USPTO. There is a pretty solid tool (OpenCorporates.com) that allows you to search all 50 state databases with one search. Best of all, it is free!
Step 3: Conduct a Common Law Search
Even if a trademark is not federally registered, it may still be protected by common law trademark rights. Whether a federal registration is abandoned or never submitted at all, a company can still use its trademark in commerce. Searching the internet, business records, news articles, and other print or online sources can help you identify these unregistered uses.
Why You Should Conduct a Federal Trademark Search
It may seem like a hassle, but conducting a federal trademark search can save you time and money in the long run. Even without hiring a trademark lawyer, filing a trademark can be expensive. At a minimum, the standard application fee is $275. Conducting a search on your own costs only time. If you conduct a comprehensive search, you will avoid the pitfalls of trying to register a mark that is too similar to one that already exists.
What Are the Risks of Not Searching a Trademark?
Whether or not you decide to register your trademark, using it for your business without conducting a search first comes with several risks.
Infringing on Someone Else’s Trademark Rights
Searching for a trademark name is as much about clearing your rights as it is understanding your competition. Especially if your potential mark is a combination or modification of common words in your industry, knowing whether others had the same idea is crucial. Failure to identify these similar marks could result in a lawsuit being filed against you. Confusion is less likely if your trademark is a made-up word or one that has nothing to do with the goods or services you sell. But it is still important to conduct a trademark search to avoid legal problems down the line.
Unnecessary Payment of Registration Fees
As mentioned above, trademark registrations are expensive with or without a trademark attorney’s assistance. For small businesses especially, minimizing unnecessary costs is a must. While it will take some of your time to conduct a trademark search, doing so ensures that you uncover similar marks before submitting an application. If similar marks do exist, you will avoid spending time and money filing the application only to discover that your mark isn’t even eligible in the first place.
The Need to Rebrand Your Company
If you launch a business, product, or service without confirming that your trademark is available, you may have to scrap your hard work and start over. In addition to the time wasted on development of an unusable brand, there is a sizable cost component; your website, letterhead, business cards, and other stationery may have to be scrapped and redone as well.