Should I Conduct A Trademark Search Before Using My Trademark?

By Josh Gerben, Esq.

Although a trademark search is one of the earliest and most basic considerations in using and registering a trademark, it’s also one of the most often overlooked. The excitement of developing a new product or service and coming up with a name, logo and/or tagline, combined with the extra time and legwork required in conducting a trademark search, leads some people to just forgo it altogether. But you should always conduct a professional trademark search prior to both using the mark and filing a registration for it. Here are some reasons why.

Reason to Conduct a Trademark Search #1: You avoid inadvertently infringing on another mark.

If you begin using a name or logo without conducting a comprehensive trademark search (meaning a federal, state and common law trademark search), you run the risk of infringing on someone else’s mark. Ignorance of an existing mark is not defense to a trademark infringement claim, and, if the other party can prove that your mark caused a loss of business for them, you may be required to pay damages.  The damages in a trademark infringement case can be as severe as disgorgement of profits and payment of the other party’s attorney’s fees.

Reason to Conduct a Trademark Search #2: You protect yourself from lost money, resources, and time.

Regardless of whether a trademark is registered or not, if another party can prove that you’re infringing on them, you’ll be required to cease using the mark. If you’re selling a product, this can result in a big financial loss with inventory that may need to be repackaged, or may no longer be used at all. If you offer a service, you lose valuable branding and marketing efforts. Either way, essentially, you’ll be starting from square one with your business if you don’t conduct a search to ensure that your name and identifying marks are yours and yours alone.

Reason to Conduct a Trademark Search #3: You give yourself a better chance of success in a registration.

The situations above can apply simply to use of a trademark – before you even begin the trademark application process. For a trademark registration, it’s even more critical to conduct a search beforehand. You’re investing even more time and money into a decision intended to protect your business – and a duplicate or similar trademark is one of the quickest ways to end up with a rejected application. A search conducted by a USPTO examining attorney is one of the major components of the application process, and if they find a duplicate or confusingly similar trademark, you’ll have to pay an entirely new filing fee and create a new application to begin the whole process all over again.

Other items to consider when conducting a trademark search:

Keep in mind that in a online trademark search, you need to be aware of both identical and “confusingly similar” marks. That “confusingly similar” test applies to both the mark itself, as well as to the category (or “class,” as defined by the USPTO) that your goods or services fall under. So you’ll need to be looking for a few things: design similarities, similar looking or sounding names, and similar color schemes in a logo or stylized font, to name a few. You’ll also need to search not only in the classes under which your products fall, but in any that could be considered related.

With the issue of similarity in the fold, trademark searches by the layperson can be difficult. The USPTO offers a free tool called the Trademark Electronic Search System (TESS), which anyone can use to conduct a trademark search. When you consider that capitalization, punctuation, spacing, and even phonetics can come into play, a trademark search is actually a lot more complex than it can seem at first glance. If you choose to conduct the search yourself, you’ll need to determine what might be considered a “similar” mark, and conduct a series of very thorough searches – the TESS database doesn’t return “similar” results without conducting an extensive search using boolean search techniques.

In addition, not every mark that is protected by trademark law is registered through the USPTO, and so wouldn’t be listed through TESS. You’ll need to do your own research as to any existing marks that fall outside of the USPTO Trademark Register.

One option in conducting a trademark search is to retain the services of a trademark attorney. They’ll have access to more powerful tools than those made publicly available by the USPTO – software designed to take into account the stringent requirements for unique marks. A trademark attorney can help avoid some of the problems mentioned above, which you may run into even if you conduct a trademark search on your own but lack the experience or tools to do it properly. That experience is also a significant offering from a trademark attorney, as they understand the ins and outs of what USPTO examining attorneys look for – and the ways to better position yourself to achieve a successful trademark registration.

Finally, if you choose to retain a trademark attorney to assist with your entire filing, you’ll not only receive a more powerful and thorough trademark search, but also the knowledge that you’re following best practices in all aspects of your application. When you consider the potential drawbacks of not conducting a trademark search or doing all you can to file your application successfully, those benefits present themselves clearly.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.