Trademark Search

A trademark search is a critical part of the trademark clearance process, and must be conducted in a number of situations. If one is choosing a corporate or company name, a trademark search should be integrated into the creative, name-selection process. Choosing such a name without the proper trademark clearance is a surefire way to create problems with rights acquisition down the road. A trademark search may also be conducted in order to secure rights for a brand, product, or service.

To begin with, it should be noted that the trademark search can either be outsourced or completed in-house. Of course, outsourcing a trademark search can be costly, and many start-ups simply do not want to spend money on professional trademark searches. As a result, many will complete the process in-house. That process will typically involve all of the usual searches a layperson might think of—Google, Facebook, Youtube, and any other major site where “use in commerce” of your proposed mark might occur—as well as the less intuitive searches on the USPTO website, and various state trademark registries (particularly in those states where you seek to conduct your business). One should also run a search on www.domaintools.com in order to determine whether the mark is being used on any URL, especially a .com domain registration. Such a registration would not only constitute a “use in commerce” for obtaining a trademark, but as a practical matter is also a consideration for business start-ups that may later seek to register a web domain that incorporates that mark.

One should keep in mind when conducting a trademark search that it is important to search a number of variations of the mark, and not just the exact mark itself, in all of the ways described above. This is because trademark rights extend beyond exact duplicates of the mark itself to all confusingly similar marks. As a result, even if the exact mark you are seeking to register is not in use, a confusingly similar mark may be already be in use in commerce. Also, when conducting the search one should keep in mind that trademark rights are limited to the type of good or service on which the mark is being used. Thus, an apple grower seeking to use the word “apple” in their trademark does not have to worry about Apple computers; instead, they may have to worry about the ability to register their mark, as it may be deemed descriptive and thus not eligible for registration, an altogehter separate concern.

If a search leads to the conclusion that someone is already using the mark, or a confusingly similar mark, that is the subject of the trademark search, that does not necessarily end the inquiry. At this point, it is usually a good idea to conduct a search on the owner of the mark itself to see whether the mark has ever been successfully enforced in a Trademark Trial and Appeal Board (TTAB) decision by searching on TTABVue, the USPTO search engine for locating past trademark opposition and cancellation proceedings. Additionally, it is important to determine whether there has been any trademark litigation involving the mark in question. Answering these questions will be helpful in determining the likelihood the mark will be enforced, and thus the risk associated with using the mark in question.