Trademark Search Before You File

April 2, 2014
Young man in Business suit with magnifying glass looking over a city

Before spending money on new packaging, marketing and advertising for that new brand name, it’s important to perform a trademark search to see what marks are already registered that might cause your application to register to be rejected.  Read 5 Reasons Your Trademark Will Be Rejected.

Most new brand owners perform a trademark search to make sure they don’t get sued by a third party.  While this is important, there are other equally important benefits to performing a search.  A full 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 side step 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 block others from getting to close to your goods and services.  This can be done by registering for related goods and services in order to create a bigger fence around your brand space.

How does one do a trademark search to find out if yours is available?


The US Trademark Office website is a place to begin your 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 lawyers 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 test the US Trademark Office uses to decide whether you can register your brand name.  The likelihood of confusion test also takes into consideration similarity of site, 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 worded 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, sources that are difficult to search without the aid of a professional, since  sophisticated search queries are used to identify sound alikes and misspellings, The professional trademark search also identifies state trademark registrations, trade directory searches, and domain names.  Domain names 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 yours.

Last but certainly not least, some courts have ruled that failure to 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.

By Cheryl L. Hodgson