Is your mark available?

Before going through the process of applying for trademark protection, you should have a trademark search performed. It’s not enough to just do a simple word search on the United States Patent and Trademark Office (USPTO) database because it will only reveal marks that contain the exact word(s) placed in the search engine. The trademark benchmark for registration and infringement is likelihood of confusion, which means that marks that are the same orconfusingly similar could be an issue. And a simple word search on the USPTO database doesn’t account for terms that are confusingly similar. In addition, if you are not well versed in how to use the Trademark Electronic Search System, you will be misguided into believing that your mark is available when it’s not. 

 

Conducting a thorough search will help you to ferret out potential conflicts and give you an idea as to the likelihood of registrability of your mark. A thorough search should include review of the following:

 

  • USPTO register
  • Pending USPTO applications
  • Domain names
  • Social media handles
  • Internet websites
  • Secretaries of States
  • Trade name listings
  • Telephone directories
  • Online databases
  • Industry publications
  • Reported decisions

 

In addition to looking at the marks themselves, you also want to examine the goods and services associated with the marks as well as any related goods or services. Once your search results return, you want to analyze the search in light of the availability of using the mark and then also how you might protect the mark in the future against infringement. You also want to look at the mark in terms of descriptiveness, geographic significance, if it employs the name of a living or deceased person, and if it could lead to the dilution of a famous mark while not necessarily causing a likelihood of confusion. 

 

Performing a trademark search is the most difficult part of the trademark process. Assessing the risk is not foolproof but is much more telling than having no search conducted at all. You definitely don’t want to waste your money and time applying for a mark that is already taken or subject to any of the other trademark law refusals. Ultimately it is up to you as the business owner to make the decision about registration once informed about the possibilities, but that can only be done when a search is performed.