Editor’s note: This article appeared in our June 2009 issue.
Q. I have heard I should ‘search’ a trademark before I apply to register it. What does that mean and how do I do it?
A trademark search is the process of identifying companies or persons who have sought registration for or are using your proposed mark or a similar mark in the marketplace. Because there are different types of trademark protection available (namely, federal, state, and common law), a complete trademark search should include not only federal trademarks on file with the United States Patent and Trademark Office (USPTO), but also state and common law trademarks.
Consulting a variety of databases for the different types of marks can be very useful when evaluating whether a chosen mark is available for your use and/or registration, or infringes the rights of a prior user. Although optional, a trademark search conducted early in the marketing and product development process can be invaluable in terms of time and money savings should you discover that someone else has already registered or begun using your mark or a similar mark in your field.
As noted above, you conduct a trademark search by looking for your mark and similar marks in databases containing federal, state, and common law marks. You can conduct the search yourself using online and other available resources, or you can retain a private trademark search company to conduct the search for you and provide a report summarizing the search findings.
A search for federal trademarks, both active and inactive pending applications and registrations, can be conducted free of charge through the USPTO’s Trademark Electronic Search System (TESS), available on our website at www.uspto.gov. Be sure to read and understand the scope notes, help screens, and disclaimers before conducting your search. You should also know that if you do file an application with the USPTO to seek federal protection for your mark, an examining attorney will also conduct a search of your mark in the USPTO database, and the search results may or may not be identical to the results obtain through your search. Please note that state and common law trademarks are not included in the USPTO database.
Many states offer online searchable databases for state trademarks in their specific states. However, state trademark agencies vary from state to state and, unfortunately, there is no one free Internet database that provides information on all state trademark registrations. However, there are fee-based databases that do collect state trademark information.
Common law marks can be found through a variety of online and print sources, including telephone, business and manufacturing directories; print and online catalogs; trade journals and magazines; Internet search engines and portals; newspapers, press releases, and new product announcements.
When formulating your search strategy and considering what sources to consult in your trademark search, the general rule is the more comprehensive and inclusive the search, the better. Many just search for the exact spelling of a trademark of interest. For example, some mistakenly believe that if the exact mark does not appear in the USPTO’s trademark database, they will obtain a federal registration.
However, if there is a federal registration or prior-filed application that is not spelled exactly like your mark, but is sufficiently similar in sound, appearance, or meaning, and for related goods and/or services, your trademark will be denied registration.
Although there is no absolute certainty that your trademark search will reveal all potentially conflicting marks, a comprehensive search that includes federal, state, and common law references is the best way to evaluate whether a chosen mark is available for your use and/or registration. Because there are several considerations involved in making this determination, it is generally advisable to consult an attorney who specializes in trademark law. He or she can conduct and review the search for you and provide an opinion regarding the availability of your mark.