You may have heard that you don’t have to formally trademark your brand to start using it. While this is true, it is also true that without a search beforehand, you could start using a logo or name only to find out later that someone else has been using a similar logo or name longer than you have. That prior user may be able to make you stop using your trademark. Even worse, if that business moves into your territory, the name recognition you built up over time with your money and effort may end up benefiting the new business.

Conducting a trademark search before using a trademark is an important way to protect your interests. It can tell you if your word, name, or symbol is already taken, or if it is not, how many other people have brands that might be similar. It is also the first step to take prior to filing for trademark protection.

Preliminary Trademark Searches

You can start off your trademark search by doing some of your own legwork. A preliminary, or “knock-out” search, can help you find out quickly if your trademark idea is not viable.

A preliminary search should include several areas:

  • The federal Trademark Electronic Search System (TESS);
  • Your state’s Patent and Trademark Depository Library:
  • The Internet Corporation for Assigned Names and Numbers (ICANN):
  • Internet searches; and
  • Resources in your local area, such as telephone books and business directories.

Most of these searches can be conducted online and for free, except for the time you spend.

When conducting a preliminary examination, don’t just search on your exact trademark name, but also variants that are spelled differently and/or sound alike. You can even search for variants of your trademark name in other languages, in case an operating business has a name with the same meaning.

If you find an exact or substantially similar match in your preliminary search, you may reconsider your idea of using that mark before committing any resources. If you decide to change your trademark based on the preliminary search, you can simply conduct a new preliminary search on the new name.

Should you get a trademark attorney involved at this stage? It can be useful to have a knowledgeable eye examine the results of your preliminary search and give pointers on how to improve your search terms. If money is no object, you may wish to have an attorney involved from the beginning. However, most trademark attorneys will recommend that you also order a comprehensive trademark search, and many include the cost of a comprehensive search in their fee.

Comprehensive Trademark Searches

If your trademark passes the preliminary search, is it time to file a trademark application? Though you can, the better decision is to order a comprehensive search. A comprehensive search will comb through many more databases, to a greater depth, than you can accomplish in a preliminary search. Besides running multiple variations of your business name through the databases you may have used in your preliminary search, a comprehensive search also examines social media, business publications, domain names, and many other sources. A comprehensive search will even compare subparts of your trademark name to the list of other trademarks in existence. It also provides an initial analysis of the information it finds.

Applying for a trademark is not a straightforward process. Whether one trademark infringes too closely on another can be subjective and dependent on individual facts. Trademark examiners, the attorneys at the U.S. Patent and Trademark Office who allow or deny applications, are individuals with their own opinions on how the law should be applied. No one can predict with 100 percent certainty if your trademark application will be approved. Your chances are much better, however, if you invest the time and money in trademark searching before filing.

The best plan of action for navigating the trademark application process is to rely on the counsel of an attorney experienced in the practice of intellectual property law. Dunlap Bennett & Ludwig’s team of attorneys specialize in intellectual property law, successfully obtaining more than 1,000 trademarks for our clients each year. If you have questions regarding the trademark process, contact us today.

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Posted in: Intellectual Property - Trademarks, Trademark

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