Doing a trademark search is an essential step in securing trademark rights. The importance of a trademark search is often overlooked and failing to do a proper trademark search prior to using a trademark is the most common mistake made by new businesses.
While the internet has made a trademark search easier in some ways, it has also increased the likelihood of trademark infringement.
Trademark Clearance Search
Trademark applications filed at the USPTO are increasing every year. The rising number of trademark applications means truly unique brand identifiers are becoming more rare, so there’s a higher chance that your trademark may be too similar to a pre-existing trademark. This is where a trademark search becomes extremely important.
Conducting a thorough search prior to registration isn’t mandatory. If you fail to do so, however, you may apply for a trademark that would result in a likelihood of confusion with another brand. In this situation, you will forfeit your application fee while receiving no rights whatsoever. In some cases, you may alert the rightful owner that you’ve been engaged in trademark infringement. This often results in receiving a trademark cease and desist letter or even being sued.
What does a trademark clearance search entail? When doing a trademark search, we search:
- The USPTO’s Trademark Electronic Search System (TESS) for pending and existing trademark registrations.
- The Internet such as a Google search to find uses that may qualify for common law trademark
- Business names.
- Domain names.
Some intellectual property owners think that a basic search via the USPTO is sufficient, but this could result in missing the type of prior uses that can result in trademark litigation. While unregistered brand identifiers won’t enjoy the same level of protection as a federally registered trademark, their owners still have some rights. If this use predates your own, they will likely have some superior rights.
Although searching the USPTO database may appear to be easy, it is important to understand that small differences in the phrase that you search can lead to large differences in search results. For example, simply including or not including a space can lead to missing a pre-existing trademark. It is also very important to search synonyms since any trademark with a similar commercial impression must be considered. As an example, due to similar connotations the trademarks JELLY BEANS and LOLLIPOPS were held to be confusingly similar for skating rinks. Trademarks that look different but sound similar when spoken must also be considered.
In doing our trademark search we often include wild card searches. These occur when symbols are used to replace letters in order to identify similar trademarks with slight misspellings. A search for “Dur$et, for instance, will return results for all trademarks that begin with DUR and end in ET. This can pinpoint trademarks that aren’t exactly similar but may still cause a likelihood of confusion.
There are several options available when searching the USPTO website:
- Basic Word Mark Search: This will search the database for text-based brand identifiers only.
- Structured Word/Design Search: This searches allows a search of multiple different fields at the same time. It also allows a search that includes text and designs. You’ll need the Design Search Code Manual for this to be useful.
- Free Form Word/Design Search: Multiple search fields and Boolean logic can be used for more in-depth searches of both text and design-based identifiers.
During your trademark search, you may find properties that look or even sound like your own. This doesn’t necessarily mean that you cannot use the brand identifier in question. The goods or services must also be related. A helpful guide here is a comparison of the trademark classes of goods or services, though the class alone is not definitive since goods in different classes can be highly related just as goods in the same class can be different enough to avoid confusion. An example of the same trademark being used in relation to different goods and services is DELTA which is used by both an airline and faucet manufacturer.
Why isn’t a Trademark Search Required?
After a trademark application is filed, the USPTO will do its own trademark search to determine if a prior or pending trademark registration is likely to be confused with the trademark application at issue. If a prior confusingly similar trademark is found, the application will be refused.
While some new business owners decide to save money by foregoing a search, it is often an example of being penny-wise by pound foolish because there are numerous trademark search benefits. The benefits of doing a trademark search include:
- Identify prior trademark usage: The key reason to do a trademark search is to avoid spending any time and money at all on a trademark that you can’t own. If it turns out that a prior use does exist, all time and money that you have invested in your trademark will be lost. This can include things like the goodwill that you’ve already built up, packaging costs, productions costs, marketing costs, website development, etc. In addition, you may be dragged into trademark litigation which can be even more financially devasting.
- Catch infringers: At times a trademark search will reveal a usage that began after your use. In this case, we recommend that the application be filed and that a trademark cease and desist letter immediately be sent to the infringer.
Although skipping a trademark clearance search may seem financially ideal – especially for startups – it could quickly result in substantial economic damages. With about 4,000 trademark lawsuits being filed each year, this is an escalating issue you’d be smart to avoid.
What is a Trademark Search Report?
A trademark search report is what you’ll receive after we perform our trademark clearance search. This will take the form of a 2 or 3 page memo that includes a variety of information that is broken down into federal, common law, and domain name sections for an easier understanding of your rights.
For the most thorough search possible we use a vendor that conducts the search and reports the results in a 1-2 inch thick search report. In this type of search we furnish an opinion letter that summarizes the findings and suggests the appropriate next steps. This type of search is considerably more expensive and our experience is that it is often not necessary.
Our trademark search memo includes the following:
- Trademarks that are currently registered and protected.
- Pending applications that may be approved prior to yours.
- Similar trademarks that have been abandoned by the owners or cancelled by the USPTO or a third party.
- Similar uses found on the Internet.
- Similar business names.
- Similar domain names.
After reading the report and opinion letter, you’ll have a good idea of which hurdles – if any – you’ll encounter during registration with the USPTO. This is the best way to ensure an expedient application process. It will also help avoid a trademark opposition being filed against your trademark which can occur even if the trademark office approves your application.
How to Perform a TESS Trademark Search
Prior to seeking out a professional for a trademark search, learning how to perform a TESS trademark search may be beneficial. This is a simple way to discover whether your chosen brand identifier is even worth submitting to an expert. If you can find an exact match or confusingly similar trademark on your own, then you’ll know that you are not quite ready to have a professional do a trademar search for you.
The following steps and tips will help you navigate the USPTO website:
Basic Word Mark Search
- Visit the Trademark Electronic Search System (TESS) Basic Word Mark Search page.
- Enter the trademark you’re searching for.
- Click ‘Submit Query.’
- Review individual results by clicking on registrations.
- Perform wild card searches using the ‘$’ truncation.
Structured Word/Design Search
- Visit the Trademark Electronic Search System (TESS) Structured Word/Design Search page.
- Type in the different fields to search.
- Fields can be left the same when doing design searches or change to ‘Design Codes.’
- Click ‘Submit Query.’
- Review matches and perform wild card searches as described above.
Freeform Word/Design Search
- Visit the Trademark Electronic Search System (TESS) Freeform Word/Design Search page.
- Enter your search terms into the blank field.
- You can use Boolean operators (e.g. and/or) and enter multiple terms.
- Use the U.S. Trademark Field Codes at the bottom of the page for more in-depth searches.
- Click on individual field codes for instructions on use.
- Click ‘Submit Query.’
- Review matches and perform wild card searches.
Further information about performing trademark searches can be found at the USPTO’s Search Trademark Database page. This page generally recommends hiring a trademark attorney to clear trademark rights.
Searching for confusingly similar trademarks doesn’t shouldn’t end after registration. Recent reports reveal that more than 80% of brands experience trademark infringement each year. Once you’ve secured a federal trademark registration, the onus of policing violations falls on you. If you fail to police use of your trademark, you may lose trademark rights. This is why trademark monitoring is essential. It can identify various instances of infringement so you can take action immediately. A failure properly police and maintain your trademark will result in trademark abandonment.
While a trademark monitoring service is ideal, you can take the following steps yourself:
- Google Search: Infringement against your brand name, slogans, product names and other text-based properties can often be discovered via Google Search.
- Monitor Amazon: Trademark infringement on Amazon has become a huge issue over the years. Frequently search for your trademarks on the platform to pinpoint possible violations.
- Google Alerts: Google also allows you to sign up for notifications when new pages or websites pop up featuring chosen keywords. Once you enter your trademark, you can simply wait.
- Monitor Your Industry: Legitimate trademark infringement is most likely to come from within your own trade. Monitor industry news and publications for potential infringement.
Though each of these methods are advised the can be very helpful, we strongly recommend having a trademark attorney set up a trademark watch for all trademarks that are important to your business. Due to the volume of trademark watches we have, we are able to pass along 20% savings from our watch vendor to our clients.
An in-depth trademark search can ensure you’ve covered all your bases prior to registering brand.
If you have any questions or are ready to begin with a search, please contact us today.