Having a trademark attorney perform a federal trademark search is an important first step in protecting your brand. There are two crucial reasons why nearly every business will need to perform a trademark search. First, a search can help you make sure that your chosen trademark isn’t infringing upon someone else’s rights in an existing trademark. Also, a federal trademark search can help you determine whether your mark is available for federal registration with the U.S. Patent & Trademark Office (USPTO). Your search may uncover other trademarks that are confusingly similar to your own. In that case, you will want to be able to look into other potential names before you spend a lot on a name that can get you into trademark infringement trouble.
Avoiding Trademark Infringement
The “bare minimum” when it comes to trademarks should be doing a trademark search to make sure that you are not infringing upon someone else’s trademark. This is not just for their benefit. It also helps you to make sure that you avoid legal trouble. You may have heard the phrase “ignorance is no excuse” when it comes to other areas of the law. That certainly applies here, too. If you are sued for trademark infringement, you may have to close your business until you can re-brand under a new trademark. The cost of doing so will not be cheap. In fact, it could cost you your business altogether.
Searching for Conflicts
Trademark applications are frequently rejected by the Trademark Office on the basis that the trademark is confusingly similar to a trademark that has already been registered. While it is possible to convince the Trademark Office that your mark is not really similar, this can be both difficult and expensive. Having a trademark attorney perform a federal trademark search before filing your application can give you a better idea as to whether your trademark application is likely to be successful.
All businesses should seek to obtain a federal trademark registration. There are many advantages to owning one. Businesses that register their trademarks have nation-wide rights to use their mark. It also gives them a legal presumption of ownership of the mark. If the business owner ever decides to sell the business, the business will be more valuable if it comes with a registered trademark, since registration removes some of the risk for potential buyers.
When Should I Perform a Trademark Search?
The best time to perform a trademark search is actually before you adopt and use the trademark for your business. Unfortunately, many businesses do not contact a trademark attorney this early. They often call a trademark attorney only after they have settled on and invested in a name. Maybe they have purchased a domain for their website. Or they might have spent hundreds or thousands of dollars having logos, business cards, and marketing materials designed and printed. But what if the trademark they have chosen infringes upon someone else’s trademark rights? Then they have to either decide to re-brand and admit that this money was wasted, or continue to use the infringing mark. These are not great options.
If, on the other hand, you have an attorney perform a trademark search before settling on a name, you will be in a much better position. If the search turns up a conflicting mark, then you can try another name. That way, you’ve only spent a little money on the search, rather than invested heavily in a name that is unavailable. Once you find a name that is clear of any conflicts, then you can feel more comfortable investing in that name.
The “Knockout” Trademark Search
Before you hire a trademark attorney to conduct your trademark search, you can do your own basic search (called a “knockout search“). A knockout search checks for trademarks that present very obvious conflicts. You can go to the Trademarks page on the U.S. Patent & Trademark website and select TESS. Here, you’ll want to do a Basic Word Mark Search. Hopefully your search does not turn up an identical or similar mark associated with identical or similar goods/services. If it does, your mark may not be eligible for registration. The knockout trademark search is a good first look into whether your trademark may be eligible for federal registration. However, it is no substitute for a comprehensive trademark search conducted by an experienced trademark attorney.
The Comprehensive Trademark Search
Clients often ask me why they should hire a trademark attorney to perform a professional trademark search. If TESS is available to everyone, how is my search any better? The trademark search service that I provide is a more comprehensive search than what most people can do on their own. Of course, I have several years of experience looking for confusingly similar trademarks. But I also use specialized software that has better search capabilities than TESS. This software doesn’t just look for the identical marks that might be uncovered in a knockout search. It also checks for confusingly similar marks, marks with alternate spellings, foreign language equivalents, and other marks that could be problematic that wouldn’t be uncovered in a Google or TESS search.
Confusingly similar marks can be difficult to find. They may be similar because of spelling differences. For example, one mark might include the word WINGS, while another is WYNGS, or even WINGZ. Marks can also be confusingly similar because of the use of synonyms. A mark that includes CHILDREN can be similar to another that instead uses KIDS, TYKES, TODDLERS, or BABIES. Having an attorney perform a professional trademark search can help uncover any confusingly similar marks. And you will want to find these marks, so that you do not waste time and money filing trademark applications that have little or no chance of success.
You should have a trademark attorney conduct a trademark search before you adopt, use, or try to register a trademark. A trademark attorney can give you an informed opinion of any risks that are likely if you file a trademark application. The trademark application process can include many obstacles that are difficult to overcome. But a good trademark search can make you aware of these in advance, and help you determine whether filing an application for your chosen mark makes sense.
Do You Need a Professional Trademark Search?
If you would like a trademark search report from an experienced trademark attorney, please feel free to call me at (480) 360-3499, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.