Trademark Search
Are you sitting on a brilliant concept, a sure-fire winning idea for a brand with products and services for which people will be clamoring? If so, you should be working hard to trademark that brand, but where do you start?
If you are like most people today, you look up “How to Trademark Your Brand” on the Internet to find information and videos on the subject. The first thing you are going to see is that you must complete a thorough trademark name search.
You may be the world’s best online researcher, but that doesn’t mean you know anything about doing a trademark search. In fact, a proper trademark search entails three distinctly different examinations, none of which resemble a Google search.
#1. Federal Trademark Search
This initial search, or “Knock out Search,” is a search for anyone using the mark you wish to register. Does somebody already own the mark?
Too often, brand owners jump to the conclusion that, finding no conflicts here, they can proceed with their application.
And too many of them fail to continue to conduct the other two critical searches.
An examining attorney will do a similar search upon filing your application. They will search for similar goods and services, phonetic or foreign language equivalents, and commercial expressions when determining the likelihood of confusion.
Your mission in the Federal Trademark Search is to do that examiner’s job before they get the chance.
#2. State Trademark Search
Now, you need to search through all 50 state government trademark databases to discover any similar marks already in use. Often, local businesses will only file for trademarks in their state and don’t pursue federal registration.
Finding a similar mark in a state registry can lead to significant issues later. That mark owner can claim prior right after operating under the brand for a particular time. They may successfully cancel your trademark with a priority claim for their earlier use of the mark.
#3. Common Law Trademark Search
Unlike Federal and State trademarks, no registry exists for Common Law Trademarks. These marks gain legitimacy through commercial use in a specific geographical area. These rights are restricted regionally and are not easy to enforce, like a federal registration.
However, using the TM symbol with a Common-Law Trademark is legal. But Common Law Trademarks only provide coverage at the state level and afford little protection, if any, anywhere else.
The How
So, how might you go about successfully completing these three crucial trademark searches? You already know these searches are specific and nothing like the typical online quest.
Are you prepared for this learning curve?
Mastering these searches and the techniques necessary to anticipate and recognize all the elements the trademark office may see as conflicts takes time. But brand owners often choose the solo path for trademark registration to save money or believe they have what it takes.
If you are intent on doing the work yourself, here are a few US Trademark Office resources to aid you.
Possible Grounds for Refusal of the Mark
The USPTO may be required to refuse registration of your mark on numerous grounds.
The Trademark Electronic Search System (TESS) is an important part of doing a thorough clearance search.
Before you apply, you should search the USPTO’s trademark database (Trademark Electronic Search System, or TESS) to see if any trademark has already been registered or applied for that is
This search engine allows you to search the USPTO’s database of registered trademarks and prior pending applications to find marks that may prevent registration due to a likelihood of confusion refusal.
Summary
Performing a thorough trademark search before filing your application is essential. Failing this first step is nearly sure to sink your registration. Plus, the same diligence is necessary for all three federal, state, and common law searches.
Attempting a trademark search without adequate knowledge and experience is time-consuming and will likely cause significant frustration. It can take years to develop these skills.
The Other, Easier How
If the prospect of working through all the details we lay out in this article sends chills down your spine, you are in excellent company. You probably don’t eat, drink, and live trademarks as we do at Trademark Factory®.
We have years of experience pursuing trademark registration for clients across the globe. We know what it takes because we do it every day. That’s why we offer our unique all-inclusive 100% cash-back guarantee of trademark success.
Our skilled professional trademark attorneys and specialized trademark staff will do that name search for you. Then, we will shepherd your application through the bureaucracy, responding to all inquiries and keeping you abreast of its progress until its ultimate approval.
Click here to get started!
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