Companies vigilantly protect their brands with trademarks that are unique to their business. This creates a potential trap for the unwary if you happen to adopt a trademark that violates the rights of someone else. At a minimum, you may be forced to drop the trademark. In the worst case scenario, you could be liable for damages and attorneys fees. So before spending time and money building your brand, it’s critical to conduct a trademark search
Preliminary Search vs. Full Search
Trademark searches come in two varieties: (1) preliminary (or knockout) searches; and (2) comprehensive (or full) searches. This post is going to focus on preliminary trademark searches for logos. To learn about preliminary searches for word trademarks, please click here.
Reasons to Do a Preliminary Search
Preliminary searches are designed to eliminate trademarks with obvious conflicts due to a likelihood of confusion. A likelihood of confusion exists when trademarks are so similar and their goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.
Timing of a Preliminary Search
A preliminary search should be done as early as possible to avoid:
- 1. Adopting a weak trademark that cannot be protected;
2. Building goodwill in a trademark that you may be forced to drop because another party has prior rights; and
3. Exposure to damages and attorneys fees resulting from claims by senior rights owners.
Resources for a Preliminary Search
There are a number of resources you can use to run preliminary trademark searches (Google, domain name registries, phone book, etc.), but the best place to look is the United States Patent and Trademark Office (USPTO) website. The USPTO maintains a searchable database for federally registered trademarks and pending applications. Searching the database is free.
How to Search a Logo
Let's walk through the mechanics of doing a logo search on the USPTO database. In this example, we will assume that you want to use the logo below for legal services.
To run a search on this logo, you should first navigate to the USPTO website.
Click on "Trademarks" and select "Searching Trademarks".
Navigate to the Trademark Electronic Search System (TESS).
The starting point for a logo search is the USPTO's Design Search Code Manual. The USPTO assigns design search codes to applications and registrations to help with searching the USPTO database for conflicting marks. Links to the Design Search Code Manual are located in either the Structured or Free Form search options.
The Design Search Code Manual indexes the categories, divisions, and sections that make up these codes.
Keys are coded in category 14, division 11, sections 1 to 9. Section 2 (Keys of some other shape) is the most relevant for our search. This results in the design code 14.11.02.
Circles are coded in category 26, division 1, sections 1 to 31. Section 15 (Three circles) is the most relevant for our search. This results in the design code 26.01.15.
After consulting the manual, you will use the Trademark Electronic Search System to conduct a search of the USPTO database. In this example, we will use the “Free Form” search to run the search with the relevant design codes.
The search discloses 3 records.
By checking the details for each record, you will discover a pre-existing registration that is identical to the proposed logo (surprise, surprise, it's our logo!). This is an obvious conflict, and you should avoid adopting the proposed logo.
Preliminary Search Limitations
The example above disclosed an identical match, but it's usually never that simple. There are significant limitations to conducting a preliminary search on the USPTO database. First of all, the database does not contain "common law" (or unregistered) trademarks. Common law trademarks can limit your ability to both use and register your trademark.
In addition, selecting design codes is an inherently subjective exercise that will affect your search results. Therefore, a logo search on the USPTO database might not disclose records that could impact the likelihood of confusion analysis.
Reasons To Use A Trademark Lawyer
This is why "do it yourself" searches should only be used to identify obvious conflicts. If you want to know if your trademark is registrable, then you should contact a trademark lawyer.
Trademark lawyers have access to special tools that can overcome the limitations of a preliminary search. For example, we use the TrademarkVision system, which uses image recognition technology to find federally registered trademarks and prior pending applications that may affect your ability to register your trademark due to a likelihood of confusion. An example of a TrademarkVision search is set out below.
Want to know more about trademark searching? Sign up for a free trademark assessment learn whether your trademark is available for registration. You can also schedule a free attorney consultation on our home page.