The first person or company to use or register a distinctive trademark has rights in that mark. If a second person uses a trademark that creates a likelihood of confusion with the first person’s trademark, then the second person may have to change the mark and possibly pay damages to the first user. A trademark search helps avoid these problems. It also prevents you from paying fees for rejected applications.
Once you’ve selected a name, a trademark search looks for the same or similar marks, whether registered or unregistered, to your name. The marks you’re looking for are marks used anywhere in the country that are used in a way that might cause confusion. Sometimes these searches are like looking for a needle in a haystack. Other times it’s like looking for a steel beam in the haystack.
Fortunately there are many resources to look for those marks that might conflict with the mark you selected. The main sources are:
- federally registered trademarks – www.uspto.gov
- state registered trademark databases
- the internet – domain name searches, Google searches, etc.
- publications – yellow pages, trade publications, other databases
If you get a direct hit in your search, that’s great. Your search has been made easy and you’ve avoided many headaches down the road. But you often don’t receive a direct hit. That’s where the search becomes an art. You search for homonyms, synonyms, phonetic equivalents, wild cards, truncations, etc. The one thing you can count on is that your search will be incomplete no matter how thorough you are. You just have to live with and accept a small degree of uncertainty.
You can always turn to the pros and hire a professional search firm to conduct the search for you. The pros know which databases to search and have mastered the art of searching. Some even have their own proprietary databases. They will not give you legal advice, but they will give you a report of their hits. If you’re going to spend a lot of money to create your brand and establish your mark, then it makes sense to pay the pros to conduct the search. It also makes sense to use the pros if you’re registering a graphic design.
Generally speaking, if you plan on doing business on the web to a national market, then you should do a more extensive search. If you only plan on using the mark in one state or small region, the less extensive your search needs to be. If you don’t have a distinctive name, you should still do a check to avoid a claim of unfair trade practices.