Trademark Search

Trademark searches are a critical step in the trademark registration process. If a proposed mark is confusingly similar to one or more existing marks, it may be unregistrable and may present an infringement risk. A trademark search heads off these potential issues and is a due diligence step that every entrepreneur and business should undertake before adopting and advertising brands and business names.

This article is provided for non-attorneys and explains the importance and various aspects of trademark searches, including key concepts, methodologies, and the importance of thorough investigation.

Understanding Trademark Searches

A trademark search is an investigation to determine whether a particular mark conflicts with similar trademarks that are already in use or registered by another entity. This process helps to avoid likelihood of confusion issues with existing marks (e.g., logos, word marks, symbols, composite marks, etc.) and, if necessary, allows the entrepreneur or business to revise their branding strategy and identify a mark that can be successfully submitted in a federal trademark application to the United States Patent and Trademark Office (USPTO). A search should include an effective search of federal trademark registrations, federal trademark applications, state trademark registrations, and unregistered trademark use.

Preparation for Federal Trademark Registration

A trademark registration grants exclusive rights to use a trademark or service mark in connection with the goods or services identified in the registration. It provides legal protection against unauthorized use by others and enhances the brand's value. A federal trademark registration provides nationwide trademark rights, and presumptions of ownership and validity. See 15 U.S.C. §§ 1057(b)–(c). Thus, a trademark registration is a highly valuable tool for protecting the branding and reputation of a business. However, a trademark registration may be invalidated despite those presumptions if there is a senior user of a confusingly similar unregistered trademark. Qualifying prior-user rights are not eliminated by the trademark registration and prior rights can be the basis for a petition to cancel the trademark registration.

A trademark search provides insight into the likelihood of success of a new application to register a particular word mark or logo. It is an important due diligence step in building a strong brand and trademark portfolio.

How to Conduct a Trademark Search

A trademark search is performed for multiple purposes, including determining the chances of success for an application to register the subject trademark, the strength of the trademark, and whether there is any potential infringement that could lead to expensive trademark litigation. In order to effectively perform such a search, the search must be comprehensive and include all relevant sources of third-party trademark use that could present a challenge to your trademark rights.

The Scope of a Trademark Search

An effective trademark search must include more than just a search of the USPTO database of registered trademarks. We are concerned with more than just whether there is another party that has a registration for a similar mark. We also want to know whether there are other parties that have earlier use of a similar mark in the market for similar goods or services. If just one party has an unregistered similar mark, they may be able to challenge your application and your trademark rights if they can demonstrate consistent use of their trademark that predates your use or application filing date. The trademark search should be aimed at not just USPTO filings. A complete search should be expanded to include common law use and state trademark registrations because those trademark usages carry trademark rights that can potentially cause a significant problem for your branding and trademark plans. If your search is comprehensive, you may discover all the potential issues and challenges facing your proposed trademark before you decide on whether to move forward with the trademark and file an application.

Preparing for a Trademark Search

All of the following information should be clear before conducting the search in order to allow the search to be effective. The applicant must identify the exact wording and graphical elements of the trademark it intends to use. The applicant must also provide an accurate description of the goods and services that it expects to sell under the trademark, and the consumers to whom it expects to sell the goods and services. These categories of information are the most relevant to the determination of whether a trademark owned by one party has a confusing similarity to a trademark used by another. In order for the search to have accuracy and efficiency, this information must be known at the outset, so that the search is properly structured from the outset.

The following sources should be searched in order to provide a comprehensive search of prior trademark rights:

Federal Trademark Registrations

Active federal trademark registrations are the most relevant category of prior trademark rights because they carry established trademark rights that can be immediately enforced against an infringing party with a presumption of validity. A federal trademark search of the USPTO database is highly important. They are also a basis for rejecting your federal trademark application. Thus, federal registrations should be thoroughly searched.

Federal Trademark Applications

Pending federal applications must also be searched and considered in a trademark clearance analysis. A filed application has priority of rights over a later-filed application. Federal applications can be used by a trademark examiner to reject an application on a provisional basis, but the rejection does not become a bar to registration until the application advances to registration.

USPTO Trademark Search Tool

The USPTO offers the Trademark Search System, an online tool that allows users to search USPTO records for existing trademarks. The USPTO's trademark database contains records of all registered trademarks and pending trademark applications. This database is a valuable resource for conducting preliminary searches to identify potential conflicts with a registered mark or trademark application.

Search for Unregistered Trademark Use

State Trademark Registration Search

Each state has a trademark registration process through its Secretary of State's office or other department. There are typically public databases of these state trademark registrations that should be searched in all relevant states, including states nearby your proposed operations that would be considered to be in the same market for your goods and services.

Common Law Trademark Search

Common law rights are acquired through the actual use of a mark in commerce, even if the mark is not registered. It is important to consider common law rights when conducting a trademark search, as pre-existing marks with such rights can still pose a conflict.

Unfortunately, there is no single answer on how to conduct a trademark search for unregistered trademarks and service marks. There are many search strategies, which typically are focused on online resources, such as search engines and social media platforms to identify common law trademark usage. Investigating industry-specific forums, websites, and blogs can be time-consuming, but can also provide useful information. An effective search for unregistered trademarks requires a combination of methods to provide thoroughness in determining whether a conflict exists with an unregistered trademark.

Foreign Trademark Office Search

Many foreign jurisdictions have their own trademark search databases that allow the public to search their international trademark records. For example, the European Union Intellectual Property Office (EUIPO) trademark search tool is an essential resource for trademark attorneys and applicants that are interested in trademark filings in the EU and some other jurisdictions. Also, the EUIPO comprehensive TMView database provides access to millions of trademark records in international jurisdictions. The tool offers insights into trademark trends and competitor activities, facilitating strategic decision-making in trademark registration and protection. Its multilingual interface ensures accessibility for users across different EU member states.

Key Concepts in Trademark Searches

An effective trademark search should extend beyond exact matches to include phonetic equivalents, misspellings, and synonyms, which may reveal marks with similar sounds, meanings, or commercial impressions. Because trademark protection can cover visual elements, including logos and symbols, searches should also incorporate relevant design search codes rather than relying exclusively on text searches. The USPTO’s search system allows users to review both live and dead trademark records, helping identify current applications and registrations as well as records warranting investigation into historical use. A dead application or registration does not necessarily mean that the mark is no longer used or that its owner lacks enforceable common-law rights. Trademark goods and services are categorized into international trademark classes, which help organize applications, registrations, and database searches. However, a search should not be restricted to a single class. Related goods or services may fall into different classes, and different class numbers do not eliminate the possibility of a trademark conflict.

To perform an effective search, you must understand the legal concepts that determine a likelihood of confusion between two trademarks. Below is a summary of the most important concepts in the determination of whether there is a legal conflict between trademarks.

Likelihood of Confusion

Likelihood of confusion is a legal standard used to assess whether consumers might mistakenly believe that goods or services offered under two different marks come from the same source. This concept is crucial in trademark searches and registration, as well as trademark infringement.

Reasonable Consumer

A reasonable consumer is an ordinary person who exercises average care in purchasing goods or services. The perspective of a reasonable consumer is used to evaluate the likelihood of confusion between trademarks.

Commercial Impression

Commercial impression refers to the overall perception created by a mark in the minds of consumers. It includes factors like appearance, sound, and meaning, which are collectively used to determine whether trademarks are confusingly similar. These are the most important factors to considered in determining whether a pre-existing mark is too similar and would create consumer confusion:

• Appearance: The visual similarity between trademarks. The appearance of the marks is crucial because visual similarity can lead consumers to mistakenly believe that the goods or services come from the same source.

• Sound: The phonetic similarity between two marks. Sound is also important as phonetically similar marks can cause confusion, especially when spoken in advertisements or over the phone.

• Meaning: The conceptual similarity between trademarks. The meaning of the marks, or their connotations, plays a significant role as well. If two marks convey similar ideas or concepts, consumers might associate them with the same brand.

• Goods and Services: The relatedness of the goods or services associated with the marks. The nature of the goods and services associated with the marks is critical. Even if the marks differ slightly, confusion is more likely if they are used for similar products or services.

Identical marks are exact matches with regard to both the mark and the goods and services. In such situations there is no question as to whether there is a likelihood of confusion. Similar marks require analysis of the factors, including those listed above. A similar mark may differ in some aspects but still create a similar commercial impression. For example, the mark "INSPIRATIONS" for a restaurant may be confusingly similar to the use of "INSPIRED" for a bar. The marks are similar in appearance, sound, and meaning, as the words are different grammatical variations of the same root word. The services are also very similar as restaurant and bar services are regularly offered in the same establishment. Judgment must be made as to whether the proposed trademark and a pre-existing trademark will be considered so similar that consumers are likely to be confused between the two marks.

If a conflicting mark is found, there are further considerations to evaluate. If the pre-existing mark is in a different geographic location the risk of infringement is lessened if there is little to no chance that your use of the mark is damaging the other trademark owner. Also, if the other conflicting mark is used on other classes of goods or services they may be sufficiently distinct so as to avoid a likelihood of confusion and allow the application to be accepted. For example, Delta Airlines and Delta faucets can co-exist because their respective goods and services are different enough that the separate uses of the mark are not confusing to the consuming public.

Trademark Attorney's Role

A trademark attorney has the expertise to conduct a comprehensive trademark search and interpret the results. They can provide guidance on the likelihood of confusion and the potential for conflicts with pre-existing marks. Only about 49% of federal trademark applications filed without the assistance of a trademark attorney succeed. Thus, in order to put yourself in the best position to succeed, you should seek the assistance of an experienced trademark attorney.

USPTO Trademark Application Process

The trademark application process involves several steps, including submitting the application, examination by an examining attorney, and publication for opposition. The examination process can conclude within 6-9 months, but the timeline is highly variable due to examiner backlogs, the number of issues to address in the application, and/or other factors. The examiner, the USPTO official who reviews trademark applications, will evaluate the applied-for mark to determine if it meets all legal requirements for registration. Examination begins with a thorough trademark search. The examiner will then compare the most closely related trademark records found in the search to the applied-for trademark to determine if there is a likelihood of confusion. This assessment involves considering various factors, including the similarity in appearance, sound, and meaning of the marks, as well as the relatedness of the goods or services they represent. If the examiner finds that the applied-for mark is likely to cause confusion with an existing mark, he will issue a written office action to the applicant that includes refusals based on the confusingly similar trademark records, and any other objections (e.g., based on matters of form).

In order to advance the application, the applicant has to address the refusals and objections in a response in writing, which may include legal arguments and/or amendments to the application. If the response to the office action persuades the examiner that a likelihood of confusion does not exist, the examiner may remove the refusal and approve the application. It is highly recommended that the applicant engage a trademark attorney to assist in the prosecution of the trademark application to properly prepare the application and effectively respond to office actions.

Conclusion: The Importance of a Thorough Trademark Search

Avoiding Conflicts

The trademark search alerts the applicant to potential issues before filing, allowing the trademark applicant (e.g., an entrepreneurial individual, a company, etc.) to make informed decisions about whether to proceed with the application or to consider alternative marks. While conducting a trademark search does not guarantee that the mark will be registered, it significantly reduces the risk of rejection and helps the company navigate the application process more effectively. A thorough trademark search helps to avoid conflicts with existing marks, ensuring a smoother registration process and protecting the brand's legal rights.

Final Thoughts

Trademark searches are a vital part of protecting a brand's identity and ensuring its legal standing. By understanding the key concepts and utilizing available resources, businesses can confidently navigate the trademark registration process and safeguard their intellectual property. Conducting a thorough search and consulting with a trademark attorney can help ensure that a proposed mark is unique, legally protectable, and free from potential conflicts.