Short answer: Yes. Now for the long answer: After the Internet took hold in the late 1990s, the concept of location took on a whole new meaning. Instead of being rooted in physical space, businesses now jockey for location in cyberspace. Vast numbers of businesses -- even local enterprises -- have put up their own websites, creating a new potential for competition (and confusion) in the marketplace.
Because of this, every business owner must pay attention to whether a proposed trademark has already been taken by another business, regardless of that business's physical location. Even if your business sells products or services only to local customers, a competing out-of-state business (with a similar trademark) may be trying to sell products or services to your customers.
Yes. Under good guidance, you can do your own search of trademarks registered with the U.S. Patent and Trademark Office (USPTO) at the USPTO website (www.uspto.gov). For more information, see Nolo's article How to Do a Trademark Search.
You can also visit one of the Patent and Trademark Depository Libraries (PTDLs), available in every state. These libraries offer a combination of hardcover directories of federally registered marks and an online database of both registered marks and marks for which a registration application is pending.
In addition to searching for registered or pending marks, you may also use product guides and other materials available in PTDL libraries to search for possibly conflicting marks that haven't been registered with the USPTO. This can be important because, even if a mark is unregistered, its existence could preclude you from registering the same or confusingly similar mark in your own name or using the mark in any part of the country or commercial transaction where customers might be confused.
In addition, you may want to review merchandise at an online store. For example, if you are selecting a trademark for a new toy, you can visit "ToysRUs" at www.toysrus.com. Once there, you can browse hundreds of toys and do a keyword search for any toy trademark that is similar to yours. This same approach can be used for any type of product by clicking the shopping category link on one of the popular search engines, such as Yahoo.com.
While you'll no doubt find hundreds of similar trademarks being used across the country, you'll need to know how to sort through your search results and determine which trademarks you are prevented from using. For help doing this, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias (Nolo).
Yes, before doing a formal search for registered and pending marks in the USPTO's database at www.uspto.gov, you can conduct a search for unregistered marks by using an Internet search engine. For instance, by entering your proposed name in the search field on Google (www.google.com), you will get a report of every instance where the name appears on Web pages that the Google search engine has indexed. However, for some marks -- for example, "Apple" -- a search engine may unearth hundreds or thousands of results that are of no value for your trademark searching purposes. For that reason you need to focus your search, using some of the searching tips provided at the Google site (or in Nolo book mentioned below). Alternatively you may choose to use a fee-based trademark search engine such as Saegis on Serion (www.saegis.com).
You can also search domain names being used by Web-based businesses at any domain name registrar. You can find a list of domain name registrars at ICANN.org, the organization that administers registrations (www.icann.org/registrars/accredited-list.html).
This type of informal search can alert you to unregistered trademarks that are being used to sell a product or service similar to yours. It won't help you too much, however, in determining which unregistered trademarks you are prevented from using. For help doing this, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias (Nolo).
Many people prefer to pay a professional search firm to handle a trademark search rather than do it themselves. This can make sense if your financial plans justify an initial outlay of several hundred dollars, the minimum cost for a thorough professional search for both registered and unregistered marks. Various companies offer professional searches, the most well-known of which is Thomson Compumark (www.thomson-thomson.com).
The trademark search report you will receive will consist of a list of similar federally registered marks, pending marks, and marks that have been canceled or abandoned, a survey of similar state registrations, and an examination of numerous sources of unregistered users of similar marks, brand names, and trade names.
If you work with an attorney when acquiring the trademark search, you will also get a legal opinion as to whether your proposed mark is legally safe to use in light of existing registered and unregistered marks. Obtaining a legal opinion may provide important protection down the road if someone later sues you for using the mark. For help finding an attorney, see Nolo's Lawyer Directory or Nolo's article How to Find an Excellent Lawyer.
You need to determine whether another business is already using a trademark that's identical or similar to the one you want to use to ensure that you won't violate someone else's trademark rights.
If you are sued by a trademark owner for using its trademark, at the least you can be forced to stop using the trademark. Depending on how long and extensively you've used the business or product name, it could be costly -- you could have to change products, brochures, letterhead, business cards, signs, advertisements, and your website.
And, if you use a federally registered trademark improperly, a court will assume you knew it was federally registered, even if you did not. This means that you will be cast in the role of a "willful infringer." Willful infringers can be held liable for large damages and payment of the registered owner's attorney fees.
For help with choosing a unique mark that competitors can't copy, get Trademark: Legal Care for Your Business & Product Name, by Stephen Elias (Nolo). For help conducting a trademark search, see Nolo's article How to Do a Trademark Search.