A registered trademark search is in Step 1 of the Brandaide 3 Step Trademark Registration Process, SELECT | SECURE | SUSTAIN. Before spending money on new packaging, marketing, or advertising to launch a new product, it’s important to perform a registered trademark search to learn whether there are pending applications or registered trademarks that could cause USPTO trademark application to be rejected based upon likelihood of confusion. Read 5 Reasons Your Trademark Will Be Rejected.
Most new brand owners perform a business name trademark search to make sure they don’t get sued by a third party. This is the most important reason. There is a cost to perform a thorough search prior to filing, it is a vital step in the trademark registration process. Step 1 of the Brandaide trademark registration process is SELECT. Your selection should be based upon the results of a registered trademark search as well as choosing a name that qualifies for a USPTO trademark. Skipping this step can result in being sued or complete loss of rights. I’ve helped many along the way who failed to perform a search, and it cost them 100 times more than the cost of a search and clearance prior to launching.
In addition, there are other equally important benefits to performing a trademark search. A trademark search provides a detailed picture of the competitive landscape for the goods or services you plan to sell. The trademark search can also serve as a road map for future brand expansion.
With a skilled advisor to interpret the trademark search, it is possible to create a strategy to successfully register in ways you might not otherwise thought possible.
For example, you might not decide not to register in certain categories to sidestep objection by a possible conflicting citation. You might decide to word your services differently in order to avoid being rejected because of one of the references shown in the search. You might also get a better picture of ways to block others from getting too close to your goods and services. This can be accomplished by registering for related goods and services in order to create a bigger fence around your brand space.
How to Perform a Registered Trademark Search
The US Trademark Office website is a place to begin your registered trademark search but is only the beginning and not a substitute for a full professional trademark search. A trademark search at the U.S. Trademark Office is a preliminary screening effort and will cover some of what is already registered and pending. Even trademark attorneys use a professional search firm since as a practical matter it is only possible to obtain a complete picture of the risks in the market by a skilled search professional.
Trademarks need not be identical to prevent registration based upon confusing similarity. Consumer confusion is the legal test used to decide whether there is an earlier registration that would block your USPTO application. The likelihood of confusion test also takes into consideration similarity of sight, sound, and meaning (the trilogy). Similarity in any one of the three areas is sufficient to prevent registration by a later adopter. Foreign words that are registered as trademarks for the same or similar goods and services will be translated into English. For example, your English word trademark could be blocked by a U.S. registration of the same term in Spanish.
In addition to federal registrations, there are trademark registrations available in all 50 states. Common law trade directories and domains are also included in a professional trademark search. These sources are difficult to search without the aid of a professional since sophisticated search queries are used to identify sound-alikes and misspellings, The registered trademark search also identifies state trademark registrations, trade directory searches, and domain names. Domain names are not always registered as trademarks. However, domains that contain the proposed mark can be a land mine to the new brand owner since they need to be checked to see if they are in use for the same or similar goods and services as you are selling.
Last but certainly not least, some courts have ruled that failure to do a registered trademark search is akin to negligence. If you are sued for adopting someone else’s mark, your failure to conduct a search can be considered evidence of bad faith.
If you need help performing a trademark business name search, schedule a time to MEET WITH US.