How to Perform a Trademark Search
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC. My law firm represents trademark owners throughout the world, and today, I will be answering the question of how to perform a trademark search.
Before I answer that question more directly, I should recommend to you that you retain a registered trademark attorney who has experience with trademark matters, including trademark availability assessments and trademark clearances. I say that not because I’m a trademark lawyer, but instead because I truly believe it.
It’s important to recognize that simply performing a search online using Google, Bing, Yahoo or some other search engine, does not provide the necessary clarity for you to move forward with what may be the most important asset of your company, your trademark or service mark or your brand. So, use a trademark attorney who can guide you through the necessary steps and give you the information you need to make an educated decision about whether or not to invest in a particular trademark.
That being said, it’s really a multi-step process in order to determine whether or not a trademark is something that you should use, and whether or not someone else is using a mark that could infringe on your brand. But when you’re performing a trademark search, you should start in the country in which you are looking to use that mark.
Now in today’s day and age and the ubiquitous nature of the internet, essentially, all use is throughout the world. However, my practice primarily focuses on the United States. Therefore, I start within the United States Patent and Trademark Office or USPTO. You can search for any kind of mark within the USPTO. It’s important to start by searching the exact mark you’re looking to use as your brand. However, that is not enough. And this is where a trademark attorney really comes into assistance. That trademark attorney will know what other variations you should be looking at, be it in sight, sound, or some other way, and search for those variations as well.
A trademark attorney will also be able to help you use the search tools that are available through the USPTO to tailor your search to particular goods or services or international classes to limit what might be out there relating to how you’re going to use the mark. Just because there’s another use of a mark out there doesn’t mean that you can’t use your mark.
For example, there are many companies that use the same or similar trademarks. One common example is Delta. Delta is a trademark for the airline company. It’s a trademark for the faucet manufacturer. It’s a trademark for the dental insurance company. All of them compete in such different industries that there isn’t a likelihood of confusion, and therefore, no trademark infringement. So, all of them can have exclusive rights in the Delta mark in connection with the goods or services that they use.
So, knowing all of those things, and understanding how they fit into a search, is critical. Once you get the sufficient information to determine that there is not a conflict within the USPTO, it doesn’t mean that you are out of the woods. In order to really clear your trademark, you also need to see what is actually being used that isn’t necessarily applied for or registered with the USPTO.
Today, the easiest way to do that is via a search engine. However, it’s not the only way and the only place you should look. You should be searching through domain name registrations, through state databases that show what trademarks have been registered within that particular state, through state databases that show trade name filings for corporate entities, and all these other kinds of databases that show whether or not a particular mark has been used by a company in connection with various goods or services. So, it is a multi-level process that requires not only looking for registrations within the USPTO, but also for uses that would entitle someone else to claim prior trademark rights.
So, ultimately, again, a trademark attorney with experience in performing trademark availability assessments, trademark clearances and trademark infringement matters would be of the most assistance to you.
So, this has been Brian Hall answering your question: How to perform a trademark search.
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
COMMENTS