How to do a Trademark Search
Knowing how to do a trademark search can save time and money when filing a trademark application. A trademark search is often the most important step in achieving trademark protection. A proper clearance search can reduce the chances that your ownership of your trademark will ever be challenged. This can help you avoid potential litigation and provide a solid defense if you’re ever accused of infringement.
Unfortunately, this is one of the most overlooked steps in trademark registration. Examiners from the U.S. Patent and Trademark Office (USPTO) conduct their own search, so many trademark owners feel that performing a search is pointless. Once you understand the process of federally protecting your brand identifiers, though, you’ll recognize why knowing how to do your own trademark search can be helpful.
What is a Trademark Search?
Every year, the USPTO issues about a quarter of a million trademark registrations. The owners of these brand identifiers were not required to perform a trademark search prior to filing, but there’s a high likelihood that many of them did. This is because an examining trademark attorney at the USPTO will deny applications that create a likelihood of confusion with existing trademarks.
A trademark search attempts to find any similar trademarks prior to filing an application with the USPTO. If you were to file for protection and the examiner finds a confusingly similar trademark has already been filed, you will have wasted your time and the money for your application fee.
While utilizing the USPTO database is one of the primary steps in how to do a trademark search, this doesn’t constitute a full clearance. This is because brand identifiers don’t need to be federally registered to garner trademark protection. A trademark search done by a trademark attorney will increase the likelihood of registration and minimize the potential for trademark litigation. That said, it will likely be helpful and may save you time and money if you to do your own search first prior to having a trademark attorney do it.
How to Do a Trademark Search on TESS
The Trademark Electronic Search System (TESS) is the best place to start when doing at trademark search. This is the search system provided by the USPTO. Here you’ll find every trademark – whether text-based or visual – that has ever been filed. This makes it the most in-depth free clearance tool available.
When you visit the USPTO trademark database, you’ll be presented with a variety of search options. The one that’s right for you will depend upon a variety of factors. Text-based searches are the easiest to perform, but even they have nuances since trademarks don’t have to be exact duplicates for trademark infringement to exist.
The following are the search options provided by the TESS website:
- Basic Word Mark Search: Only text-based searches – such as brand names and slogans – can be performed with this tool.
- Structured Word/Design Search: Both text and design-based trademarks can be queried with this tool. If searching visual identifiers, the Design Search Code Manual is necessary for an effective query.
- Free Form Word/Design Search: This is the most in-depth search tool available on TESS. Boolean logic along with additional search fields can be used. Both visual and text-based queries are allowed.
Even if you plan on hiring a professional who knows how to do a trademark search, looking through TESS is still a good idea. This will help you avoid spending money to discover something you could’ve found on your own in five minutes. You may also find a few things you have questions about that you can later ask your trademark attorney.
How to do a Trademark Search:
- Click the TESS main page and then select “Search our trademark database”.
- Click “Basic Word Mark Search”.
- Add the search terms related to your trademark.
- You can search by “Combined word mark”, “Owner name and address”, or “Serial or Registration number”
- Utilize the ‘$’ truncation for wild card searches (e.g. D$lta will return results for Delta, Dolta, Dalta, etc.)
- Utilize radio buttons to narrow down your search if appropriate (e.g. live or dead trademarks).
- Click the ‘Submit Query’ button.
Structured Word/Design Search
A structured search should be used when a search for a word yields too many results to be helpful. For example, using a structured search will allow you to search for a certain trademark in a certain class, among other options. To perform a structured search:
- From the TESS main page, click Word and/or Design Mark Search (Structured).
- Enter your search terms into the appropriate fields (this can include design codes) along with the field options to narrow your search.
- Change the operator (e.g. or, and, not, etc.) to “and” to search multiple fields.
- Click ‘Submit Query’ button.
Remember that not all protected trademarks can be found through the TESS system. Common law trademarks, for instance, have some protections even though they’re not federally registered.
Do I Need a Trademark Search?
Although trademark searches aren’t required prior to filing an application with the USPTO, every trademark owner should invest in one. While saving time and money during the submission period is enough to warrant this step, there are additional benefits that come with doing a search. Consider the following:
- Production cost savings: You can use your trademark during the registration process, but if it turns out the trademark is already taken, you will have exposed yourself to a claim of trademark infringement and wasted money and resources producing products, marketing materials and other items. If your chosen trademark is already in use, everything you produced may be worthless.
- Identify potential dilution: Even if your trademark is unlikely to cause confusion, you may still be engaged in trademark infringement due to dilution. A broad search will typically identify the potential for tarnishment.
- Catch cybersquatters: In doing a trademark search we also search the Internet and domain names, so a search should be able to identify instances of cybersquatting as well. This gives you the opportunity to take control of your brand online before your trademark is registered. Over 80 percent of these cases are decided in favor of the plaintiff.
- Take steps toward ownership: You may find that your trademark – or one similar to it – was previously registered with the USPTO. In these cases, you can begin the process of sending a trademark cease and desist letter or filing a trademark opposition or trademark cancellation.
- Avoid implicating yourself: If the trademark you’re applying for is already in use, by filing an application you will essentially announce to the world that you’ve been engaged in accidental infringement. This is because many companies use trademark watches to get notified whenever someone files for a similar trademark.
There is no situation when a trademark search won’t benefit your goals. In the end, the value of what you learn will far exceed the time commitment or financial expenditure you put into the process. The trademark search that we do is $400.
Having a comprehensive search done prior to trademark registration isn’t the last time you should search for similar trademark usage. Identifying instances of infringement of your trademark is your responsibility. If you don’t work to detect misuse, you can slowly lose trademark rights. This makes trademark monitoring essential.
Trademark monitoring is very similar to a clearance search, but instead of making sure you’re not infringing, you’re ensuring that no one else is infringing upon your rights. Unfortunately, many brands fail to properly monitor for misuse. To protect your rights, consider the following steps:
- Perform online searches: Infringement against text-based trademarks can be easy to find via search engines. This is particularly effective if another brand is misusing your trademark online.
- Perform Amazon searches: Amazon trademark infringement has become a serious issue in recent years. Take the time to search your trademarks on the platform.
- Google Alerts: If you don’t have time to utilize search engines or even if you do, Google allows you to set up automatic keyword alerts. You’ll be notified whenever a website uses your trademark.
- Industry monitoring: By definition, most trademark infringement occurs within the same or similar industries. This makes monitoring your field’s publications and news sources a good idea.
We utilize a professional trademark watch company to handle trademark watches for our clients. Due to the volume of work we give to our watch company, we are able to pass along a 20% discount to our clients for these services.
If you have more questions about how to do a trademark search, or are ready for a trademark attorney to do one for you, please contact us today and we will be happy to assist.