Before registering your trademark with the USPTO, it’s important to conduct a trademark search to ensure no one else is currently using your mark. While there are many “free” online search services, these are more often than not insufficient to identity all possible issues with your trademark.
At Gerben Law Firm, one of our biggest challenges is educating clients about the three types of trademark searches that are needed to properly conduct a search. There’s not only a federal trademark search on the USPTO database, but also a trademark search of all 50 state government databases and a Common Law search. Only by looking through all three of these different categories of trademarks can we provide an opinion on whether or not a trademark is clear to use and register.
What types of trademark searches are necessary to obtain an accurate clearance report?
1. Federal Trademark Search
The federal trademark search is most commonly known as the USPTO database search. It involves a preliminary step, called a knock-out search, where you type your name into the agency’s system and see if any other trademarks pop up. This initial search identifies any exact matches. For many people, this is where they end their search. However, when you’re doing a proper federal trademark search, you need to look for phonetically similar marks, foreign language equivalents, trademarks with the same meaning, etc. When we see clients get refusals, it’s not because there is an exact match blocking their application, but usually one or more nuanced similar marks.
It’s very important to keep in mind that the USPTO search, or for that matter, any “free” search services, are only looking at very obvious issues. They are simply unable to see all the nuances and variations of trademarks that could cause a problem for you. The technology is just not advanced enough. Even our searchers, with over 10 years of experience, need an hour or two to look through the federal trademark database on any particular mark. They know the breadth of what they’re looking for, so it takes a long time.
If an attorney is promising you a low rate trademark search and a 20-minute turnaround time, in all likelihood, they’re not doing a full, proper search of the federal trademark database.
2. State Trademark Search
If no problems are found in the federal trademark database, the next step is to look at all 50 state government databases.
In the United States, each state has its own trademark database where you can go and register trademarks. You aren’t required to file in every single state because that’s what the federal trademark database is for. Often, local businesses that don’t feel the need to file a federal trademark registration just submit an application in their state.
When performing a clearance search, it’s important to understand that just because a trademark may not be registered on a federal level, any state trademark registrations that were filed before you started using the mark actually have the prior use in commerce. This means that the other trademark owner could cancel any registration you obtain. So, while you don’t typically find a lot of heavy conflicts in a state search, if you do find something, it can create a significant problem later on.
3. Common Law Trademark Search
The final category of trademarks are common law trademarks, and these are marks that haven’t been registered with the state government or with the federal government. Looking for this type of trademark use in our searches is important because we need to make sure another company hasn’t been using the same trademark before you started using it.
In the United States, we reward trademark rights based on the actual use of the trademark. So, if I were operating Gerben Law Firm for 10 years as a trademark attorney and I never registered the trademark, if somebody else wanted to open up Gerben IP and offer trademark services, I would still have a trademark claim. The idea is that consumers got to know this name over the years as it relates to trademark services. If someone else were to start using that name, it could create confusion in the marketplace. The same goes for your business.
If somebody has been in your industry using a particular name or something very similar, even if they never took steps to register it, they’re going to have certain rights. One of the most dangerous things about a common law or a state trademark is that most people never even look for these when they’re doing their trademark search.
Even if you get your mark federally registered, for the first five years that it’s registered, the owner of a common law or state registration can file a petition to cancel your federal trademark registration on grounds that they had prior use in the United States. These problems may not surface today, but they could come up during your application process, or years from now when it will be very painful to need to make changes to your brand.
Overall, trademark searches are a very involved and important process. If you’re going to do a proper trademark search and someone tells you they can do it in a matter of minutes, they’re not giving you the full story. You must invest time in a federal, state and common law search to ensure you do not have a problem with the trademark you’re selecting.
If you have any questions about the trademark search process, feel free to reach out to us through our contact form.