Typically, a big company with a new product will hire a professional trademark search company to conduct research and produce a report on whether the proposed name of its new product is likely to infringe on an existing mark. A professional search company can be expensive, however, and in many cases, this is overkill for bloggers, small business owners, and app or website developers who seek to register a trademark.
Most likely, you can do a fairly reliable search by reviewing the products or services offered within your industry (usually accomplished on the Internet), and then following that up with a search of the U.S. Patent and Trademark Office database.
For example, if you were a developer of mobile apps, you could start your search on the various app stores and follow that with a search of the software categories at online retailers such as Amazon. That should give you a general idea whether your name is likely to be confused with another easily identifiable product.
If you’re a blogger, you can search Blogger (a popular blogging site) and other online blog aggregators. If you’re an e-commerce business, then just plug the name into Google along with the relevant goods (for example, “Exclaim” and tutoring services).
In all of these searches, you want to go as “broad” as possible. For example, if you’re an app developer, you need to consider all software products because that is the trademark class within which you might register and also because a trademark owner acquires rights not just for its goods but also for goods and services that it is reasonably likely to offer. For example, it would be expected that an online game with a trademark on its name would also have rights in its name for games on mobile devices. Recall that the primary purpose of trademark law is to prevent consumer confusion.
Finally, your search should locate substantially similar variations on the mark. For example, if a popular blogger is using the named DogMan for writing about and promoting various dog photographers, he would need to search for that name as well as soundalikes (“Dawgman”), plurals (“DogMen”), gender variations (“DogWoman”) and perhaps foreign translations. These similar names could create consumer confusion, and the trademark owners might try to litigate against you.
If a search determines that the desired mark or a substantially similar mark is already in use, you may want to rethink your choice of mark. Frustrating as this might be, it is far better than closing your eyes to the competition and hoping for the best.
Failure to search—or to act on what you discovered in a search—can have expensive consequences. If you rush to publish and promote a name while a similar trademark is already being used by a competitor, the competitor may obtain a court order preventing your use of the trademark, and you may also have to pay monetary damages and attorney's fees. Of course, there are other factors involved, such as:
If your preliminary searches do not turn up any similar marks to yours (referred to as “potential conflicts”) you can, if you wish, hire a professional search firm to prepare a complete report of any similar federal, state, common law or, if desired, international trademarks. These searches are expensive, sometimes a few hundred or even a few thousand dollars depending on the complexity of the marks.
Again, such searches are not necessary to commence a filing with the PTO. Many smaller businesses prefer bypassing the professional search unless they are either entering into a licensing agreement or distribution agreement in which they must promise that the trademark does not infringe, or they need the peace of mind that comes with knowing that there are not any existing marks.