Should I Conduct a Trademark Search Before Using My Trademark?
The easy answer to this is YES!!!! It is important to do a comprehensive trademark clearance search before applying for a federal trademark registration, because you need to make sure your trademark is available to register for your particular goods and services. But why? Here are just a few reasons:
Avoid inadvertently infringing on another mark (aka prevent legal disputes)
Protect your investment against potential loss of money, resources, and time
Give yourself a better chance of success in a registration
Help strengthen brand strategy
How do you conduct a trademark search?
The first thing to consider is whether or not to hire a private trademark attorney to perform a comprehensive clearance search for you because of its complexity. This is always recommended instead of trying to figure it out on your own.
Most trademark searches take place in two different venues: searches in Trademark Status & Document Retrieval (TSDR) system and general internet searches. General searches in the TSDR will yield the best trademark search results because it will bring up a record of documents and details within the USPTO. Internet searches typically round out trademark searches. They can help an applicant determine whether there are potential competing trademarks that may be confused with their own. But those trademarks may not be directly on point which is why the trademark failed to show up in the TSDR.
Types of search strategies:
Searching for Words
You can search for the exact wording in your trademark. If your trademark includes multiple words, enter them in quotes.
Expand your search using other words or symbols in conjunction with the main word.
Search for alternative spellings and pronunciations of the word.
Searching for Designs
Perform searches in the USPTO Design Code Manual.
When searching either look up the numerical code for each prominent design element or search by combing design search codes.
Other Searching Tips
Start with narrowly focused searches. Narrowly focused searches are the most likely to uncover easily identifiable conflicting trademarks. If you cannot find similar trademarks then broaden your searches. The boarder and more loosely related the search becomes the lower the likelihood that the trademarks will be similar or likely to be confused.
Utilizing search engine tools/functions. When using the search function get to know your commands. One powerful command is “AND NOT.” You can exclude previous searches by using the “AND NOT” operator when searching for trademarks.
You should avoid narrowing searches by good or services. In general, doing this will more often than not lead to potentially missing conflicting trademarks. However, in situations where your search results come back with large results, then you may want to narrow the search by good or services sometimes referred to as coordinated classes. But please remember you will always run a risk of missing a conflicting trademark if you go this route.
Focus on live trademarks. Trademarks can be referred to as “live” meaning active application or registration or “dead” meaning a no longer active application or registration. Thus, you may toggle off the option to search “dead” trademarks. However, please note there are occasions where dead trademarks are still being used in commerce thereby giving the owner common law rights.
Things to Keep in Mind When Performing Your Searches in The USPTO Trademark Database
You must always remember that you are trying to see if your trademark is currently being using by someone else or if a trademark is so similar to yours it may cause confusion. While using the above search strategies you should be analyzing the results with two things in mind: 1) Do the results and your trademark look alike, sound alike, have similar meanings, or create similar commercial impressions, and 2) If you find similar trademarks, are the good or services related to yours? If yes, then the goods or services may be related if they’re used or sold together, used by the same purchasers, advertised together, or sold by the same manufacturer or dealer. Consequently, there is a likelihood of confusion and you may not be able to register the trademark.
In our next blog we will discuss the whether you should trademark the name of your mobile app.
If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.