Imagine that you are starting a new company or launching a new product. Naturally, you will want a catchy name that will build consumer recognition. Entrepreneurs will often apply for federal trademark registration in order to secure their exclusive right to use the mark in commerce. But before you can secure a trademark, you must first ensure that no other person or entity is already using it. For example, if you want to obtain a federal trademark on the term "Staples" for an office supplies store, you will be out of luck once you discover that such a trademark has already been registered by Staples, Inc. The U.S. Patent and Trademark Office (USPTO) will not allow you to obtain the same mark for the same type of business.
How can you conduct an effective search? Typically, a big company with a new product will hire a professional trademark search firm 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, hiring one is overkill for bloggers, small business owners, and app or website developers who seek to register a trademark. Here are some search strategies to match your needs.
Before spending any money on a trademark search firm, the Internet provides an extremely helpful and free resource for finding conflicting trademarks. Most likely, you can do a fairly reliable online search by reviewing the products or services offered within your industry.
For example, if you were a developer of mobile apps, and needed to name your latest one, 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 you hope to use into Google along with the relevant goods (for example, “Exclaim” and tutoring services).
You can follow this up with a search of the USPTO's online trademark database. Use the Trademark Electronic Search System (TESS) to conduct a free online search of the USPTO database. TESS provides access to text and images of registered marks, and marks in pending and abandoned applications. Note that you can search based on trademark class, depending on the type of business or service involved.
In all of these searches, you want to go as “broad” as possible. For example, if you are 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 USPTO. 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.