Patent Attorney and Founder
When you apply for a patent, you want to make sure you know whether or not your service or product should have a trademark. Understanding what is already in use is crucial in moving forward in your trademark and patent processes. 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 kick off the search, you’ll need a fundamental understanding of what a trademark is (and the benefits of registering one).
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.
Note: For 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. 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? Okay, fair enough, but do your best.
One good way to think about how your company may evolve is 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 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: Burger King™, once a simple restaurant that sold food as their goods, is now 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 trademark 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.
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. You’ll need to choose between seeking a license from that other company or buying them out.
Step 2: Determine a Name and/or Design
It’s time to get the creative juices flowing!
Before you determine your name and design, it’s important to do that trademark search or enlist the help of a trademark search service provider. Why? Because you need to be cognizant of wordmarks and design marks. What are they?
- 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 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” are protected as a wordmark. However, there are also design marks that protect the font, styling, color, and positioning of the words on the sign (which is probably what you think of when you hear Burger King).
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 narrower 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, it is risky early on.
Logos, over the first few years of a company, can change (unlike the wordmark). This is because the founders’ concept of the company’s core services or products didn’t line up with their customers’ concept of those services or products.
Before embarking on a trademark search, 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., “Meaty 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 will 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 a Trademark Search
The best place to start a trademark search or find a trademark search service provider is to open 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 be sure, but there seems to be no direct brand in the space with that name.
“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. It’s worth consulting a trademark search service provider or speaking with an attorney to ensure that the name is either taken or not.
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 the Trademark Electronic Search System (TESS), a search engine specifically for trademark symbols.
TESS’s primary functionality is centered around keyword searches. 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”.
Then, type in your keyword. Let’s keep “Aqua” and “Feet” separate here. Then click on “Submit Query”.
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”. Basically, they either have not renewed their maintenance fees or have failed to show 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 enter the market using that name.
Finding a Trademark Service Search Provider
If you want to apply for a patent for your invention, it’s essential to understand if a trademark is beneficial to your business. If it is, you want to make sure you conduct a trademark search accurately to apply for a trademark with the name and design you have your heart set on (with no fear of legal repercussions). If you have any questions or concerns about your current or prior marks (even if they are dead), consult an attorney. We’re here to make sure you know the risks and potential pitfalls of inaccurately searching and applying for a trademark (and patent). Reach out today to schedule your free Discovery Call.