Should I Conduct a Trademark Search Before Submitting an Application?
Conducting a trademark search is the first step in making sure no one else has already registered your trademark.
If you use a certain symbol, word, or name to represent your product, you should register that trademark with the United States Patent and Trademark Office (“USPTO”). If the trademark is granted, it gives you the exclusive rights to use the trademark which helps build and protect your brand. Before you register your trademark, however, there is another important step to take: conducting a trademark search.
What Is a Trademark Search?
To put it simply, conducting a trademark search is the first step in making sure no one else has already registered your trademark. The search will also allow you to reduce your chances of applying to register a trademark that is so similar to one already in use that the USPTO will not grant you the trademark protection you seek. A thorough trademark search also involves an examination of how similar trademarks are being used. Are they being used for similar services or products? Think Dove chocolate versus Dove soap.
Based on the results of your trademark search, you may elect to make changes to your trademark before registering it. Or, you may decide to only use the trademark in conjunction with certain products to avoid overlap with a similar trademark in other categories.
Some people conduct a basic trademark search via the internet. They essentially search for their trademark and see whether that trademark, or something similar, comes up. In most cases, though, a more thorough search conducted by an attorney or trademark search company is a wise investment. This type of search is less likely to overlook similar trademarks, identical marks used in different industries, and marks that are used mostly in print media.
Why Is a Trademark Search Important?
When you have a certain logo or brand slogan that you’re so excited to use, it can be tempting to skip the trademark search — or do a quick and messy one — and then just get on with registering the trademark. Conducting a thorough trademark search can seem time-consuming, but it is time well spent. This is a step that will save you time and headaches later on.
Here are several reasons why conducting a thorough trademark search is so important:
1. To Avoid Registration Rejection
Applying to register your trademark requires time, money, and resources. If you apply to register your trademark and a duplicate is found, your application will be rejected. You’ll then need to spend time developing a new trademark and applying to register the modified mark. You can save yourself from a time-consuming and expensive rejection by always having a comprehensive local, state, and federal trademark search conducted before you apply.
2. To Avoid Infringing on Someone Else’s Trademark
Sometimes similar trademarks may be overlooked, and you may be permitted to register a trademark that is, indeed, similar to another trademark. If this happens, the owner of the similar trademark could argue that you are infringing on their rights to that mark. You would not want another business owner infringing on your trademark, so it’s best not to do this to someone else. Conducting a thorough trademark search before registering your trademark helps ensure another party won’t later come forward with complaints of infringement.
3. To Save Money and Time in Court
Having another business claim that you’re infringing on their trademark can be a huge hassle. You’ll have to spend time and money hiring an attorney to defend you in court, and you may be ordered to pay damages to the party whose trademark you infringed upon. Then, after all is said and done, you’ll have to modify your trademark. Conducting a thorough search before registering your mark can help protect you from these lawsuits, saving you time and money in the coming years.
Tips for a Thorough Trademark Search
Of course, in order to adequately protect your business and prevent infringement, a trademark search needs to be thorough. Here are a few tips for a more thorough search.
1. Pay Attention to Design Similarities
This tip mostly applies to logos and other graphics. Pay close attention to any trademarks that are similar to your image. You recognize your image and can tell it apart from similar ones, but would a customer be able to? If you have any suspicion that another mark is too similar to your own, it probably is.
2. Look for Similar-Sounding Names
It is not enough to simply ensure your name isn’t being used. You also need to check for similar sounding names. For example, if you are registering the name “Stine HVAC” and there is a company called “Styne HVAC,” these names may be too similar for you to register your trademark, especially if the companies are in the same geographical area.
3. Pay Attention to Color Schemes
Especially if your logo or image has a unique color scheme, you’ll want to look for similar logos with similar color schemes. For instance, if you’re registering a logo that’s a red circle with two blue lines through it, and another company has registered a very similar red circle with three blue lines through it, your image may be too similar to register. Or, even if you are able to register the trademark, the owner of the similar logo may still be able to argue that you’re infringing on their rights to that trademark.
4. Search Similar Business Classes
If you own an HVAC company, then of course you’re going to search for similar names, images, and logos owned by other HVAC companies. If you own a veterinary office, then you’re going to search other trademarks used by veterinary offices. However, you should also search for trademarks in similar and adjacent business classes. For instance, an HVAC company should search for similar trademarks being used by plumbers and contractors. A veterinary office should search for trademarks used by pet groomers and boarding kennels.
Advantages of a Professional Trademark Search
There are tools you can use to conduct your own trademark search. The most common one is known as the Trademark Electronic Search System. It is owned and maintained by the United States Patent and Trademark Office. The TESS is a database of registered trademarks that anyone can search to find trademarks that are identical to your own. Even though this tool is available to anyone, there are still some key advantages to having a professional trademark search conducted by a business lawyer instead.
The TESS does not necessarily show you trademarks that are similar to your own. And there’s a lot of gray area to consider when determining whether or not a similar trademark is too similar to your own. Professionals know how to turn up similar trademarks and determine when that line is being crossed. They are experienced with advanced search techniques that help ensure no similar trademarks go overlooked, though no search provides a promise that there are no similar trademarks in commerce.
Even if a trademark is not registered, you do not want to use or register one that is too similar. However, unregistered trademarks do not show up in the TESS. Professionals are more likely to discover trademarks that are being used, but are not registered. They have access to more comprehensive databases that are not available to the general public.
Trademark attorneys also know what the USTPO looks for in a trademark registration application. They can recommend any necessary changes to your trademark to increase your chances of acceptance, helping to save you from the time and hassle of rejection.
Registering your trademark is important for the protection of your business and brand, but before you submit that application, you’ll want to conduct a thorough trademark search. For more information, feel free to contact Munizzi Law Firm. Our experienced business attorneys are prepared to offer reliable, professional counsel.