Before you register your trademark with the United States Patent & Trademark Office (USPTO), it’s important to make sure other businesses aren’t currently using the mark.
The reason for this is simple: priority use.
Trademark law has a doctrine called “priority.” Failure to prove priority (by not searching properly) can cause you to lose your trademark, even if you already registered it.
This occurs when two competing businesses attempt to register or use marks that are confusingly similar.
For this reason, it’s best to save yourself time, money, and headache by conducting a thorough trademark search prior to registration.
This article will cover the basics of doing a trademark search, as well as the different ways to interpret your results.
Direct Hit Search Using TESS
The USPTO publishes information about federally registered trademarks in a public database known as the Trademark Electronic Search System (TESS).
This is the first database you should search when considering a new trademark.
While the mechanics of a full-on comprehensive search of TESS can be complicated, a direct hit search is not. Simply search TESS for your business, trade, product, or service name and hit enter.
It’s very possible that a number of search results were returned for your mark. You can choose to either view the information on these or try another search term.
No Similar Marks
A large number of similar marks doesn't necessarily bar you from registering a new one.
Two business can use the same name if they operate in different industries.
For example, a trademark for "Deep Clean" cleaning services doesn't bar a new trademark for "Deep Clean" soap makers since they are in two different trademark classes.
If someone is using a similar trademark and selling similar goods, you should be wary of accidentally infringing on their trademark.
In this case, you should probably register for a different trademark.
If you don’t find any direct conflicts, you can then order (or create) a more thorough Trademark Search Report.
Why Order a Comprehensive Trademark Search Report
You may read online search reports aren't necessary when registering a new mark.
However, this fact is only true in a few limited circumstances.
It's important to realize that search reports prove you did your due diligence before registering your mark.
If another business accuses you of infringement, the damages may be mitigated by this fact.
Further, a thorough search report makes expanding your business easier, as you'll have a general map of where and how you can grow your business in the future.
A comprehensive trademark search report from an attorney generally costs between $200 and $400 depending on the depth of the search.
While you can do a comprehensive search yourself, it is generally not recommended.
Understanding Trademark Search Reports
A comprehensive trademark search report will show results from the USPTO database, common law sources, state sources, internet sources, and possibly more.
The results of the search should give you a good idea of what businesses are out there that use the same or similar mark as the trademark you are considering registering.
Each result in the search report should list information related to the mark, including who registered the mark, what goods or services they are using the mark for, and whether the mark is currently in use.
You should scan through your report and determine whether there are potential conflicts between your proposed business trademark and existing businesses.
If it’s very clear that there are no conflicting marks, you should consider registration. If you’re not sure about whether your mark conflicts with an existing business’s use, speak with an attorney.
The Process
Preliminary Search
Usually before a full trademark search takes place, you should perform a preliminary screening search. We hinted at a similar process in the earlier section on direct hit searches in TESS.
The preliminary search usually covers federal trademark registrations and pending applications.
Generally, this search looks for exact (or almost exact) versions of the trademark you want to check the availability for.
The purpose of this search is to provide a basic overview of the situation before spending large amounts of money on a full search.
Comprehensive Search
This is the full, in-depth search usually provided by attorneys or other trademark businesses.
As mentioned earlier, this search generally comes at a cost starting between $200 and $400. It also generally takes about five business days to complete.
A full search includes an in-depth search of:
- The federal trademark register (TESS).
- State trademark registrations in all fifty states.
- Unregistered uses and listings protected under common law.
This search locates all trademarks that are identical to your proposed trademark, as well as similar variations that could be confusing for potential customers or clients.
Conclusion
Ultimately, a good trademark search report will tell you if you're in the clear to start registering your trademarks. However, remember that even the most thorough search doesn't guarantee 100% accuracy.
Protecting your trademarks is an ongoing job that takes place over years, and sometimes even decades.
For that reason, getting off to a good start is a necessity when registering a new trademark.
Hiring an experienced trademark attorney can make this entire process easier, and even less expensive in the long run.
