A trademark is a word, phrase, symbol, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of others. A trademark can be a valuable asset for a business, as it can help to build brand recognition and loyalty among customers. However, before you apply for a trademark registration with the United States Patent and Trademark Office (USPTO), you need to make sure that your mark is not already in use by another party, or that it does not create a likelihood of confusion with an existing mark. This is why conducting a trademark search is an essential step in the trademark process.
A trademark search is a way of checking the USPTO’s trademark database and other sources to see if any trademark has already been registered or applied for that is similar to your mark and used on related goods or services. A trademark search can help you to avoid infringing on someone else’s rights, as well as to avoid wasting time and money on applying for a mark that is likely to be refused by the USPTO. A trademark search can also help you to refine your mark and make it more distinctive and protectable.
There are many factors to consider when conducting a trademark search, such as the similarity of the marks, the relatedness of the goods or services, the strength of the marks, and the evidence of actual confusion. A trademark search can be complex and challenging, especially if you are not familiar with the legal principles and technical tools involved. Therefore, we strongly recommend that you hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the trademark process and conduct a comprehensive clearance search for your mark.
However, if you want to do a preliminary trademark search by yourself, here are some basic steps that you can follow:
1. Describe the products or services being sold with the mark. You need to have a clear idea of what your mark represents and what kind of goods or services you are offering or planning to offer under your mark. This will help you to identify the relevant market and consumers for your mark, as well as the potential competitors and conflicts.
2. Identify specific terms for your product or service using the online Acceptable Identification of Goods & Services Manual. This manual lists the acceptable terms for describing goods and services in a trademark application. You need to find the terms that best match your product or service, as they will determine the international class (or classes) that your mark will belong to. The international class is a way of categorizing goods and services according to their nature or function. Knowing your international class can help you to focus your search and compare your mark with other marks in the same or related classes.
3. Develop a basic search strategy. You need to brainstorm several alternatives to your mark in case your first choice is taken. You also need to consider how similar or different your mark is from other marks in terms of appearance, sound, meaning, and commercial impression. You should use truncation devices (*) or wildcards (?) to look for marks with word stems similar to yours. For example, if your mark is “Zappos”, you can search for “Zapp*” to find marks like “Zapp”, “Zappy”, “Zappix”, etc.
4. Broaden your search strategy. You need to consider searching with alternative spellings and homonyms of your mark. You also need to use words that have the same or similar meanings or synonyms of your mark. You should also try words that have similar sounds or appearances or even phonetic equivalents of your mark. For example, if your mark is “Zappos”, you can also search for “Sappos”, “Sapos”, “Zapos”, etc.
5. Conduct the search using TESS (Trademark Electronic Search System). TESS is the USPTO’s web-based trademark search system that allows you to access and search through a database of all marks registered with or pending before the USPTO. TESS has various options for searching, such as basic word mark search, structured word and/or design mark search, free form word and/or design mark search, etc. You should choose the option that best suits your needs and preferences.
6. Search logos and designs if needed using the Design Search Code Manual. If your mark includes a design element, such as a graphic, logo, shape, color, etc., you need to search using a design code. The USPT O assigns all marks containing design figurative elements a 6-digit numerical code(s) for searching purposes. You need to use the Design Search Code Manual to determine the correct design code(s) for your mark's graphic design components (if it has any).
7. Analyze your search results using the TESS report. After running your searches, you need to review your results and see if there are any marks that are identical or similar to yours and used on related goods or services. The TESS system will generate a report of records found for each search. From this report, you can see each search result’s record number, serial number, registration number, word mark, status, and whether the trademark is “live” or “dead.” You can also click on each record to see more details about the mark, such as the owner name, filing date, registration date, goods and services description, design code, etc. You should pay attention to the marks that are “live”, as they are either registered or pending before the USPTO. You should also pay attention to the marks that have a high degree of similarity with yours in terms of appearance, sound, meaning, and commercial impression. You should also pay attention to the marks that are used on goods or services that are identical or related to yours in terms of nature, function, purpose, channels of trade, or consumers.
8. Evaluate the likelihood of confusion between your mark and the existing marks. After analyzing your search results, you need to assess the likelihood of confusion between your mark and the existing marks. Likelihood of confusion is a legal standard that determines whether consumers are likely to be confused about the source or affiliation of goods or services bearing similar marks. The USPTO uses a set of factors known as the DuPont factors to evaluate likelihood of confusion. The most important factors are usually the similarity of the marks and the relatedness of the goods or services. However, other factors may also be relevant depending on the circumstances, such as the strength of the marks, the evidence of actual confusion, the marketing channels used, etc. You need to weigh all these factors and consider them from the perspective of an average consumer who is not particularly sophisticated or careful. If you find that there is a strong likelihood of confusion between your mark and an existing mark, you may want to reconsider using or applying for your mark.
9. Consult a trademark attorney if needed. As you can see, conducting a trademark search is not a simple task. It requires a lot of research, analysis, and judgment. It also requires a good understanding of trademark law and practice. A trademark search is not a guarantee that your mark will be registered or that it will not infringe on someone else's rights. There may be other factors or issues that affect your trademark rights that are not revealed by a trademark search. Therefore, it is highly advisable that you consult a trademark attorney before you use or apply for your mark. A trademark attorney can help you conduct a more thorough and accurate trademark search, as well as advise you on how to avoid or resolve any potential conflicts or problems with your mark.
A trademark search is an important step in the trademark process that can help you protect your brand and avoid legal troubles. By following these steps, you can do a preliminary trademark search by yourself using TESS and other sources. However, a trademark search is not a substitute for professional legal advice. If you want to ensure that your mark is clear and registrable, you should hire a U.S.-licensed trademark attorney who can help you with all aspects of your trademark application and registration.
Have questions? Schedule an appointment to learn more about trademark searches and registration or how we can help you with your trademarks.