So you've just picked out a new name for your start-up. Or you've decided on a brand name for a new product. The next step is to file a federal trademark application, right? Wrong. Before filing a trademark application, you need to run 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 searches for word trademarks. If you would like to know how to search for logos, then please click here.
Reasons To Run 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 early 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 USPTO website. The USPTO maintains a searchable database for federally registered trademarks and pending applications. Searching the database is free.
How To Do A USPTO Search
Let's walk through the mechanics of doing a trademark search on the USPTO database. We're based in Nashville, and we're surrounded by distilleries. Let's say that one of these distilleries comes up with the following tag line for one of its products: THE GRAND OLD DRINK OF THE SOUTH.
To run a search on this potential trademark, you should first navigate to the USPTO website.
Click on "Trademarks" and select "Searching Trademarks".
- Navigate to the Trademark Electronic Search System (TESS).
You will now be presented with 3 options:
- 1. Basic Word Mark Search (New User);
- 2. Word and/or Design Mark Search (Structured); and
- 3. Word and/or Design Mark Search (Free Form).
In our example, the tag line only consists of words. Therefore, we're going to choose the "Basic Word Mark Search (New User)" option. We're only interested in "Live" trademarks because those are the only ones that will affect your ability to register the trademark. We will then type the tag line into the "Search Term" field.
Our search disclosed a pre-existing registration that is identical to the proposed tag line. This is an obvious conflict, and we should avoid adopting the proposed tag line.
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.
A preliminary search on the USPTO database is also unlikely to disclose numerous variations that could impact the likelihood of confusion analysis. Here are some common variations:
- Abbreviations (MOUNTAIN or MT.)
- Spelling variations (KWIK, QUIK, KWIX)
- Phonetic equivalents (SEA, SEE, C)
- Unusual punctuation (A.B.C. or ABC)
- Synonyms (SEA or OCEAN)
- Translations (BONJOUR and HELLO)
- Visual equivalents
Reasons To Use A Trademark Lawyer
This is why the preliminary search should only be used to identify obvious conflicts. A preliminary search should never be used to reach a definitive answer regarding the availability of a trademark for registration. If you want such an answer, 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 TrademarkNow system, which uses an algorithm to generate a similarity score showing how close your trademark is to prior pending and registered federal trademarks. Similarity is described as a “safety level” between one and five. An example is set out below.
Want to know more about trademark searching? Sign up for a free trademark assessment to learn whether your trademark is available for registration. You can also schedule a free attorney consultation on our home page.