Before you choose a business name or a name for your products or services, a trademark search should be conducted. It’s risky to invest time and money in a trademark and in building a brand only to become embroiled in a dispute or litigation with the owner of a conflicting pre-existing trademark that could have been discovered with a trademark search.
The object of any trademark search should be to find trademarks that are the most similar in sight, sound and meaning to yours, for the products and services most closely related to those you sell or provide. This is because the standard by which your proposed trademark will be evaluated by the United States Patent and Trademark Office (USPTO) for registration will be whether your proposed trademark creates a “likelihood of confusion” with pre-existing trademarks in the marketplace.
Navigating USPTO’s Trademark Electronic Search System
Most potential trademark applicants will start their search on the USPTO’s Trademark Electronic Search System (TESS). There are millions of active and inactive trademarks on TESS. “Active” means trademarks that appear in registrations and pending applications for registrations. “Inactive” means names appearing in canceled registrations and abandoned trademark applications.
A search on TESS of a common dictionary word will likely retrieve hundreds or even thousands of trademark records, both active and inactive. Because the volume of records on TESS is so large, getting the right answer to the question about whether your trademark is likely to be confused with a pre-existing trademark requires asking TESS the right question. Asking the right question requires a strategy to reduce the number of trademarks to a manageable number. This strategy should include a search of variations of the trademark word, as well as limiting your search to competing or related products or services, rather than searching all products and services.
- Use prefixes and suffixes. New trademarks are often created by adding prefixes and suffixes to ordinary words, or by combining words in new ways. When searching terms, consider plurals (Nations), possessives (Nation’s), derivatives (National; International) and combinations (NationsBank). Just using the word “Nations” in a search wouldn’t have pulled up these variations.
- Consider variations of plural forms. Simply adding an “s” at the end of a term may be insufficient. For example, searching “Baby” won’t retrieve “Babies”. Nor will searching “Foot” give you “Feet”, or a search for “Woman” return “Women”.
- Search misspellings. Search obvious variants on conventional spelling, as well as less obvious misspellings, to capture as many as possible. TESS contains many deliberate misspellings. Examples include KWIK, QUIX, and KWIX for “Quick”, E-Z, EASI, and EZEE for “easy”, and COTE and KOTE for “Coat”.
- Look for similarities. Since the USPTO will focus on similarities in “sight, sound, and meaning” in determining whether there is a likelihood of confusion between your proposed trademark and a pre-existing trademark, your search should also include variations that sound like your proposed trademark. So, try to search for “play-on-word” trademarks (“KNOW SWEATS”, “WRITEBRAIN”), homonyms (SEE, SEA, C), and sound-alikes (Y/I and KN/GN/N).
- Limit your scope. In addition to variations on your proposed trademark word itself, you can help reduce the number of hits on TESS by limiting the scope of the products and services you search to those that compete with your products and services, as well as to those products and services which may be related to yours. This can be done by searching trademarks in a specific class of products or services, and/or trademarks with a specific identification of products or services.
These represent a few of the strategies that can be employed when searching TESS. It is not an exhaustive list. Using these strategies will help improve your search results, but they will not find everything an experienced trademark attorney would find.
How an Attorney Conducts a Comprehensive Trademark Search
A search on TESS should be viewed as a prelude to, and not as a substitute for, a more comprehensive trademark search. This is because TESS is limited to the USPTO’s database of federal trademark applications or registrations—it doesn’t include trademarks of other parties who may have trademark rights, but no federal registration (also known as “common law” rights).
A comprehensive trademark search will reveal both registered and common law trademarks through a search of, among other things, the Internet, business directories, domain name databases, news databases, industry-specific search tools, and local or regional governmental registers. Trademark attorneys have access to robust tools that search these sources.
Once potential hits are found using these sources, a trademark attorney will analyze such things as sight, sound and meaning, the inherent distinctiveness of a pre-existing trademark, and other factors courts use in determining whether a proposed trademark infringes a pre-existing one. These tools and analyses can be deployed when reviewing any findings you discover during your own search. For these reasons, it is recommended that you engage a trademark attorney to help you with your trademark search. This will also give you the best chance for approval of by the USPTO of your application for trademark registration.
For assistance conducting a trademark search for your business, contact Becker Law LLC today. We offer big firm experience with personalized, attentive, and cost-effective legal representation you'll appreciate.