A quality trademark search coupled with an attorney’s opinion will help you understand whether your mark can be registered, and evaluate the landscape of registered marks already in use.
Before we jump in on searching, you need to have a fundamental understanding of what a trademark is. I highly encourage you to read the helpful articles below to clarify any questions you may have about trademarks.
- Blog Article: What’s the Difference Between Patents, Trademarks, Copyrights, and Trade Secrets?
- Blog Article: Top 3 Advantages of Trademarks
- Blog Article: How Much Does a Trademark Cost?
Hopefully, you are now on board and know that if you are starting/growing a company and you plan on having customers you must protect your hard work by building the brand with a federally registered trademark.
But, before you do – let’s do a trademark search first.
Note: For those marks that are close calls (which we will get to), get a legal opinion first, instead of having to respond to a cease and desist letter where you are infringing someone else’s mark.
Step 1: Determine your Company’s Offerings
If you are already in business, you probably rolled your eyes at this question (and hopefully you didn’t skip past this section). The secret here is that you need to think about not just what you’re selling now, but what you will sell or want to sell 5, 10, or even 20+ years down the line.
No crystal ball? Ok, fair enough, but do your best. This should be easier for those fledgling companies or those with just a twinkle in their eye about someday starting their own business.
One good way to think about how your company may evolve is to look at how technology and innovation have changed the brands you now know.
Let’s take Burger King™ for instance. Do you think their founders had any idea that people would be downloading software on their mobile cellular devices and communicating about coupons and even making full transactions on their phones only while going through the drive-thru?
Likely not, although, that slower pace sure sounds relaxing.
To wrap up the analogy with Burger King™ (notice how I’m adding “™” after the name, that is to give proper attribution to the federally registered mark), what was once a simple restaurant that sold food as their goods, is now also developing software.
Thinking outside the box with what your company/brand will stand for is the best way to position yourself for a nice broad search to see just how much territory you can cover.
Here is another example:
If you have developed a leather recliner product and you want to protect your brand, it would be wise to think about expanding your product line into other types of furniture, or even smart-home designs, decor, or home goods.
I’m not saying every business should become a Wal-Mart or an Amazon and sell everything and anything, but if you could see it happening, you will want to consider the expansion upfront.
The major risk is that if you do not capture the full extent of your future development, you will likely have to stay away from offering those products/services if the company has stepped into that area of commerce. Your options will be to seek a license from that other company or buy them out (which is costly/risky).
Now, there are more complicated topics we could get into (and should get into) but I’ll save them for a later article. These topics include multiple brands or product-specific brands within a brand.
Think Proctor & Gamble…is it the P&G name you recognize? Or is it one of these names: Olay, Tide, Crest, etc.? But, don’t get bogged down thinking about that for now – stay focused on protecting what you’ve developed with a strong core mark.
Step 2: Determine a Name and/or Design
It’s time to get the creative juices flowing!
Being an attorney does give me a leg up when it comes to the law and reading opinions and the like…but I get no special powers when it comes to being creative or coming up with interesting/fun branding ideas.
I do believe it helps to have the wordmark or even design mark come from the founder.
Here is a quick difference between a wordmark and a design mark:
- Wordmarks protect the actual English letters. They prevent anyone from using the exact spelling of your name, or any sound-alikes or marks with confusingly similar spellings.
- Design marks are marks that protect the actual symbol (or image) of your company (or design); therefore, they prevent anyone from using the exact image.
So, let’s go back to the BK example.
The actual letters, apart from any graphics, for “Burger King” is protected as a wordmark. However, there are also design marks that protect the font, styling, color, and positioning of the word, that appears on the sign (which is probably what you think of when you hear Burger King).
Eventually, you will have both marks too, if you’re in business long enough.
Wordmarks give broader protection because they will prevent infringers who try to sound alike or spelled similarly to the original brand name. If a customer would be confused, then there is likely infringement!
Design marks are more narrow in scope but can provide additional protection, especially to companies/brands/products that now are starting to become recognizable in their industry for certain colors, fonts, smells, or even feelings.
Furthermore, with design marks, and logos especially, early on it is risky.
Logos, over the first few years of a company, can change (unlike the wordmark). This is due to the fact that the things the founders thought were important to the company actually were not the same as what the customers found to be valuable.
I find that a logo/design for a company should not be sought for trademark protection until the fifth year of the company.
While I’m not going to brainstorm the exact name or logo that is right for you (only you know that). There are a few things to remember NOT to do when picking your name:
- Do NOT pick a name that merely describes the product or service, as this will be unregistrable (i.e. “Yummy Hamburgers”, “Sharp Scissors”, “Cold Water”, etc.)
- Do NOT pick a name that sounds like or is even spelled like another name in the same field (i.e. “Cookie-Cola” for drinks, “Toy Yoda” for cars, “Crannon” printers, etc…)
- Do NOT try to brand your company name if you’re going to be doing business as another name. It’s all about what customers are going to see and use as a guide for them to assess the quality of your goods/services
If you have further questions don’t hesitate to book a free consultation today!
Step 3: Perform Trademark Search
The best place to start is a search engine. Google, Bing, or whatever you use, plug in the name you’d like to brand and then the name of your industry, product category, or service.
For example, “Fishtoe Shoes.”
Here are the results:
This is a pretty good result! I’d click on the first few hits to make sure of it, but there seems to be no direct brand in the space for that brand.
Suppose you do a different name… “Aquatoe Shoes”, here’s the result:
“Aqua Feet” comes up… which is worth clicking on, as it certainly comes close to “AquaToe” as you desired. What we find out is that it is an Australian brand! (note the .au in the URL).
This would require a bit of digging, but you’d want to make sure to see if they have trademark protection in the US, and/or if they are selling in the US. Let’s keep this in mind as we go to the next step.
For the AquaToe example, the results are inconclusive, but if it’s more like FishToe, and nothing comes up, that’s a good thing!
A direct hit is always a bummer, but you should be careful to review to make sure they are really in the same product category/service area if there is a distinction, then it’s worth speaking with an attorney.
Assuming your basic internet search results were positive or at worst mixed, the next best place to look is the federal trademark register. These are the marks that individuals and businesses already have registered and would prevent you from getting a registration for the same or a confusingly similar name for the same classification.
The USPTO has created a search engine specifically for trademark symbols, called the Trademark Electronic Search System (TESS).
You can find a link to it from this page here: https://www.uspto.gov/trademarks-application-process/search-trademark-database
Once you are in the search engine, you will see that there are a lot of different tools available to use. I’m not going to walk you through all of these, as the USPTO has already done that in training/tutorials and so forth.
Here’s another helpful link: https://www.uspto.gov/trademarks-application-process/searching-trademarks/using-trademark-electronic-search-system
The main functionality is to perform a keyword search. Let’s use our “AquaToe” example from above, and search for the company that we found “AquaFeet” to see if they have US trademark rights. Select “Basic Word Mark Search”, as shown below:
Then, type in your keyword. Let’s keep “Aqua” and “Feet” separate here. Then click on “Submit Query”, as shown below:
Wow… just one result…and it seems like it’s in a very different class (International Class IC010) for ‘“personal care massaging apparatus”. Things are looking good.
Now, just to be complete, let’s try “Aqua Toe” as that was the original brand name you wanted to go for, and you can see there are two hits.
The good news is that these marks are “dead”. Meaning, they have not renewed their maintenance fees or have failed to provide a specimen that they are still using the mark in commerce. The Trademark office wants to be sure that you don’t sit on your rights, and that you actually enter the market using that name…again, to protect the customer from confusion.
To assess the risks of filing a trademark application knowing you have some prior marks (even if they are dead), you will want to consult an attorney to make sure you know the risks and potential pitfalls during prosecution (the trademark examiner’s scrutiny).
To recap here are the steps to do a trademark search:
- Step 1: Determine your company’s offerings: What are you selling?
- Step 2: Determine a Name and/or Design: What do you want customers to know you as?
- Step 3: Perform Trademark Search and Seek Legal Registrability Opinion
For an additional list of search guides, follow the links below.
- Blog Article: Advanced Guide to Google Patent Searching
- Blog Article: How to do a Patent Search in 6 Steps
- Blog Article: How to Do a Prior Art Search (6 Easy Steps)