Trademark Searching

Quick Summary: Before you file an application to register a trademark, you must do a search of the trademark database maintained by the United States Patent and Trademark Office  to ensure that someone else is not already using that mark. Be careful, though; if you don’t search thoroughly, you could miss out on unregistered trademarks that aren’t found in the United States Patent and Trademark Office database.

One of the most common reasons for the Trademark Examiner to refuse to register your trademark is that it is “confusingly similar” to someone else’s mark. Unless you are very familiar with the trademark case law, you won’t know how close is “too close” to another mark, and are likely to get a rejection. Hire a professional for this very important step to avoid losing your trademark filing fees. 

Why Do I Have to Search More Than Just The United States Patent and Trademark Office Database?

Why Do I Have to Search More Than Just The United States Patent and Trademark Office Database?

Some trademark applicants make the mistake of only searching the USPTO database (called TESS) when they are trying to find out if a mark is being used. This is not enough, however, because many people don’t bother to actually register their marks, and instead rely on “common law” trademark rights. Just because a mark has not been registered with the United States Patent and Trademark Office  doesn’t mean that the mark is not already in use by someone else.

What Are Common Law Trademark Rights?

What Are Common Law Trademark Rights?

“Common law” trademarks are marks that are not registered with the United States Patent and Trademark Office. Because trademark rights are acquired through actual use of the mark, it is possible to get rights to a trademark just by using the mark. This means that someone can own the trademark rights, but not have evidence of those marks appear in the USPTO database.

Does the Trademark Examiner Search the Internet to See if The Mark I want to register is already in use?

Does the Trademark Examiner Search the Internet to See if The Mark I want to register is already in use?

No, the Trademark Examiner will only search the USPTO database to look for competing marks that are “confusingly similar” to yours. This is why you need to conduct your own search before you possibly waste money filing a trademark registration which will be opposed by another party when the mark is finally published in the Trademark Official Gazette.

Why Should I Hire an Attorney to Do a Trademark Search?

Why Should I Hire an Attorney to Do a Trademark Search?

Trademark rights extend not only to the exact trademark, but to any marks that are “confusingly similar.” This means that even if you don’t find the exact mark in your trademark search, you could still be infringing someone else’s trademark.

Trademark rights also extend not only to the trademark owners exact goods, but to any “related goods” within a “reasonable zone of expansion.” This means that even if you don’t find the mark in the database for those exact goods, you could still be filing a trademark application that will ultimately be rejected by the trademark examiner.

The issue is that unless you’re well-versed in the trademark case law, you can’t identify what “confusingly similar” means or what a “reasonable zone of expansion” is. This means that when you search your trademark to see if anyone else is using it, you may think that you have the right to use a trademark that will be considered an infringement of someone else’s mark, and that your trademark application will ultimately face either rejection by the trademark examiner or be the subject of a trademark opposition even if your mark is approved by the trademark examiner.

Prevent Wasted Time and Money With a Thorough Trademark Search

Can I Prevent Wasted Time and Money With a Thorough Trademark Search?

Yes, and we recommend that you do a careful search. Trademark filing fees are not refundable, so when you don’t do a good search, and your trademark application is rejected, you lose your trademark filing fee. You also lose time and money, because you likely have spent money designing logos, having stationery and business cards printed, and developing promotional items with your trademark on them. All of that investment is now worthless.

The better practice is to hire a trademark attorney to do the search for you. She can find any other marks that might possibly conflict, advise you on trademark usage, and advise you on selecting a new mark if that becomes necessary due to conflicting pre-existing trademarks. If your brands are important to you, it’s worth a little extra investment to do the job right the first time.

Bottom Line:

The Takeaway: Don’t waste your money on filing fees by neglecting to do a good search before your trademark application is filed. Knowing what is “confusingly similar” and what are “related goods” can be tricky, so don’t think that just because you didn’t find the exact mark in the database that you can use that mark. There could be something lurking in the database that you didn’t find and didn’t know how to look for, so it’s always best to hire an attorney to do the search if you care about getting a trademark registration. 

Don't Leave Your Important Marks to Chance! Order Your Trademark Search Today.