How to Conduct a Proper Trademark Search

When you are investing a lot of energy, money, and time into starting or protecting your business and its intellectual property, the most important thing to know before filing a trademark application is whether another company or person already owns the same trademark you wish to register.

Why are trademark searches important?

In the event there is already a federal trademark registration for the same or similar name, the USPTO is likely to refuse your application based on a likelihood of confusion. In addition to the federal register, businesses may have only registered their trademark on a state trademark register, or they may have common law rights, by consistently using the trademark first. While these additional rights may not prevent your trademark from becoming federally registered, they could potentially create future legal problems which risks all the energy, money, and time you have invested into your business.

This is why we emphasize the importance of a proper trademark search to every client attempting to register a trademark, as it provides the client with all the knowledge to assess their potential risks before investing hundreds of thousands of dollars and years into a business.

3 Steps to Completing a Proper Trademark Search

To confidently move forward with registering your trademark, there are three critical areas that should be explored through a proper trademark search. These areas include the federal trademark register, all 50 state government registers, and a common law search.

1. Conducting a federal trademark search

An accurate federal trademark search report should show you all potential conflicts or “likelihoods of confusion” that the USPTO examining attorney will consider while reviewing your application. After the examiner’s initial review, they may determine that the new trademark cannot be registered because of these conflicts. For this reason, a thorough search of the USPTO’s database should be the first step in any trademark clearance search.

The first search of the federal trademark database is typically referred to as a “knock-out-search,” because it is simply a search for the trademark you wish to register, to see if there are any results. Unfortunately for many applicants, this is the only search conducted.

Besides an exact match, there are many other factors the USPTO uses to determine if a new application is likely to be confused with a pre-existing registration. The examining attorney will search all relevant classes for similar goods and services, phonetic or foreign language equivalents, similar commercial impressions, and the like when determining if there is a likelihood of confusion.

Here are a few examples of how the USPTO may refuse a trademark application based on a likelihood of confusion:

• Phonetic Equivalents: The USPTO will refuse marks that sound the same phonetically. (i.e., COCA-COLA versus KOKA-KOLA)
• Foreign Language Equivalents: The USPTO will refuse marks that carry the same meaning but in different languages. (i.e., APPLE versus MANZANA)
• Same Overall Commercial Impression: The USPTO will refuse marks that mean the same thing, even if some of the words are different. (i.e., HERE COMES THE SUN versus HERE IS THE SUN)

It takes years to master the type of search techniques required to anticipate finding marks the USPTO sees as potential conflicts. Each trademark has the potential to produce a variety of issues, so conducting a proper search should take hours. If a trademark search firm or attorney offers you a 20-minute turnaround time, it is likely they are not doing a full proper search of the federal trademark database.

2. Conducting a state trademark search

After completing a federal trademark search, the next step is to search through all individual state government trademark databases. While a federal trademark registration affords protection across all fifty states, each state also has its own trademark database, which protects a trademark in just that state. Sometimes local businesses will only file a trademark application in their own state, as they do not feel the need to have a nationwide federal registration.

A state trademark search is needed because if there is a similar trademark on the state register, it could have an earlier in-use date than you and therefore would have a priority claim for use in commerce. That priority claim would give a state-registered trademark the basis to cancel any federal registration you obtain.

While there are typically not a lot of heavy conflicts found during a state trademark search, a similar trademark registration at the state level can create significant problems in the future, after you have already invested a lot of time and money into your business.

3. Conducting a common law trademark search

The final type of trademark clearance searches are common law trademark searches and they are very important because they will show whether another company has been using the same trademark before you ever started to use it. Common law trademarks are not registered in the state or federal databases.

Knowledge of common law trademarks could potentially save you years of lost time and hundreds of thousands of dollars invested into your business. If you were to obtain a federal trademark registration and you begin to use your mark for a few years, another entity with a common law trademark could petition to cancel your trademark registration if they had an earlier first use date.

For example, let’s say Shelly wants to open a smoothie shop.

She does a federal trademark search and sees that no one has SHELLY’S SMOOTHIES trademarked for a smoothie store. Shelly invests tens of thousands of dollars into starting her business and it takes about two years to get her smoothie shop up and running. Two more years go by, and Shelly is looking to extend her businesses into more locations and different states.

In the fourth year, Shelly receives a cease-and-desist letter from a company called SHELLY’S SMOOTHIE SIPS stating it has been using its common law trademark since 2000. SHELLY’S SMOOTHIE SIPS then files a petition to cancel Shelly’s federal trademark registration.

Shelly’s established business is now in serious jeopardy after years of business and hundreds of thousands of invested dollars. A thorough common law search at the beginning could have prevented all these potential legal issues. This is why a common law search is very important for the long-term protection of your business and intellectual property.

Final Thoughts

A proper trademark search, which correctly identifies potential risks in the federal trademark database, state trademark databases, and common law search, requires adept knowledge and skill for searching. Gerben IP offers these three searches as part of its comprehensive search report process so that we can prepare clients with the knowledge of all potential risks before they invest a lot of energy, money, and time into their business.

We want our clients to be confident in their knowledge of all potential risks before filing a trademark application and our search reports provide them with the best information available.

If you have any questions about the trademark search process, feel free to reach out to us through our contact form.

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Chad Jalandoni, Esq.

Chad Jalandoni, Esq. is a trademark attorney with Gerben IP and he specializes in trademark prosecution matters and engages in all areas of trademark law, including trademark portfolio management, trademark enforcement, and trademark litigation. Prior to joining the firm, Chad worked as a trademark examining attorney for the USPTO.