How to search for a Trademark?
Introduction
In the United States, trademarks are governed by federal trademark law and state statutes. Trademark rights are acquired through use in commerce, but you can also apply to register a mark with the USPTO if you have not yet used it. A trademark search is an important part of protecting your brand or product from infringement or other legal issues.
Here we will cover how to search for a trademark properly—and why it’s important that you do so!
The likelihood of confusion is the most important factor in a trademark search.
The likelihood of confusion is the most important factor in a trademark search. This means that if the mark you are considering is likely to be confused with an existing mark, then it should not be approved for registration. The likelihood of confusion is determined by three factors:
Mark Similarity
The marks must be similar enough so that consumers could potentially confuse one for the other. However, this test does not require exact identity; rather, it only requires a sufficient degree of similarity to cause a likelihood of confusion. Thus, marks need only have some minor differences between them in order to still fall within this test (e.g., “GYMNASTICS” and “Gymnastics World”). You should note that even if two words comprise your proposed mark but those words are not identical (e.g., “Super Hero” vs “SUPERHEROES”), these may still be confusingly similar in certain contexts and thus fail this prong of the analysis.
Goods/Services Similarity
The goods or services offered by each party must compete with each other directly or indirectly because they target essentially different markets. For example, Coca-Cola sells soft drinks while PepsiCo sells cola syrup concentrate used by bottlers for making cola beverages. Accordingly, their marks can coexist on their respective products without infringing upon each other’s trademarks.
Trademark rights are governed by federal trademark law and by state statutes.
Trademark rights are governed by federal trademark law and by state statutes. The USPTO is responsible for registering trademarks with the assistance of a private industry association called the International Trademark Association (INTA). Federal registration is only necessary if you want to block other companies from using your mark in every state. Some states also register trademarks, but this is rare. In all cases, trademark law is governed by federal and state statutes.
Trademark infringement occurs when a party uses a mark that is confusingly similar to a mark already registered with the USPTO.
Trademark infringement occurs when a party uses a mark that is confusingly similar to a mark already registered with the USPTO. Trademark infringement can be either intentional or unintentional and occurs when the infringing mark is used in commerce without permission from the owner of the registered trademark.
It’s important to note that even if you are not using your business name as your trademark, you still may need protection for certain aspects of your business such as slogans, logos, and images associated with your brand.
Conflicting marks would be considered confusingly similar…
Conflicting marks are considered confusingly similar when they are identical or nearly identical, and they are used in connection with related goods or services. Courts will also consider other factors such as:
- The strength of the mark.
- Whether one mark is famous and well known, while the other is not.
- Whether consumers would be confused about whether the products came from the same source.
A likelihood of confusion exists if, upon hearing or seeing a trademark, consumers will think it’s associated with another company or product. In other words, consumers may be confused into thinking that the two entities are connected specifically through sponsorship or endorsement.
For example: If you’re a big fan of Star Wars and you see a new game called “Goo Wars: A Galactic Battle for Supremacy” coming out on March 6, 2019, for Playstation 4, would you think it was made by Lucasfilm? Or would you assume that Lucasfilm has nothing to do with it because George Lucas never endorsed any games in the franchise?
When searching for a trademark, remember that the party who uses the mark first has superior rights to that mark over a later user.
Be mindful of the fact that you can only obtain a trademark in your own name, and not on behalf of a company or organization. You cannot register a trademark for someone else’s goods or services.
A trademark is an important part of your brand identity and should be selected carefully. It should be unique so as to avoid confusion with the trademarks previously registered by others, but at the same time it must be capable of distinguishing your products from those made by others.
The Federal Register is a daily publication of proposed rules and regulations, notices of public meetings, and executive orders and proclamations published by the executive branch of the Federal Government. The USPTO publishes information about trademarks in this publication.
Trademark lawyers also have access to databases through which they can perform more extensive searches.
As a layperson, you may have access to certain trademark databases. However, trademark lawyers also have access to databases through which they can perform more extensive searches. For example, the USPTO’s online Trademark Electronic Search System (TESS) allows users to search for trademarks that are either in use or pending with the USPTO at no charge. You would also be able to run searches on several other free sites such as Google Patents, Trademarkia and Snapnames.
However, while these free sites offer some useful information, they do not provide comprehensive results and are frequently out-of-date when compared with TESS or other paid services like Thomson CompuMark and Lexis Nexis’ LEXPAT service (which is reportedly used by many Fortune 500 companies). Also, keep in mind that even if there is no exact match between what you want and a currently registered mark—something called “initial interest confusion”—your proposed mark may be confusingly similar enough to cause problems with customers down the line; therefore it’s always best practice for businesses looking into using a new name or logo design first check whether their choice has already been registered by someone else!
Ultimately, when searching for a trademark, it’s best to consult with an IP attorney to make sure your mark is unique and won’t get you sued for infringement.
Trademark search is a difficult and time-consuming process. If you are going to do it yourself, you must be careful not to miss any possible similar marks that might exist. If you need help with the process and want to make sure your mark is unique, then consider hiring an attorney who specializes in intellectual property law to assist with the search process.
It’s not very difficult to search for trademarks on your own but there are risks involved in doing so that make consulting an attorney worthwhile.
There are risks involved in searching for trademarks on your own, as the process is governed by federal law and state laws. Many people have tried to trademark a word or phrase with limited success because they didn’t realize that these laws apply outside of the U.S., too. Even though you may be able to find a company that does this type of work online, it’s important that you consult an attorney for advice and assistance before proceeding with any trademark search or registration.
Whether you’re looking for a name for your business or product, it’s not very difficult to search for trademarks on your own but there are risks involved in doing so that make consulting an attorney worthwhile
Conclusion
It’s important to remember that searching for a trademark is a process of trial and error. There are an overwhelming number of factors that need consideration, and it can be hard to know where to start when it comes time to search for a trademark. Ultimately, it’s best to consult with an IP attorney who will help you navigate the often confusing waters of trademark law in order to make sure your mark is unique and won’t get you sued for infringement.
