Why Do I Need to Perform a Trademark Search?

An American trademark search is the best way to determine if the mark you have chosen for your product or service is free for use.

After creating a service or product, you will need to distinguish it from the crowd, as well as being sure you haven't accidentally used someone else's registered trademark.

Under common law in the United States, using a mark will provide you with rights. This means you don't always need to register a trademark to be protected by law. Because states have authority over businesses and the trade names that they use, it's crucial to perform a trademark search before investing any of your time or money.

It's very common for people to use a trademark without checking if they are legally entitled to do so, which can result in lost marketing money when they learn they must stop using their mark. A comprehensive search will give you the information you need to decide if registering your mark is a good choice.

Conducting a study before you start using your mark for your business is always a good idea. If another company is already doing business in the same class, using your mark may not be the best idea. The existing company may be able to take you to court and prevent you from using the mark.

Performing a search will help you to make sure that you aren't copying any registered trademarks when designing your mark. If your trademark application is rejected by the United States Patent and Trademark Office, you will not be able to get a refund for your fee.

What is a Preliminary Trademark Search?

A preliminary trademark search should be your first step when you're considering using and registering a trademark, and can be a good way to save time and money. If you're familiar with searching for trademarks, you can use free sources such as the Trademark Electronic Search System (TESS), which is a tool maintained by the USPTO that allows the public to search for registered trademarks and trademark applications.

Performing a preliminary trademark search is an important part of registering your trademark. However, it's important to understand that even if your search doesn't reveal trademarks similar to your own, there are still several ways your application can be rejected.

How Do I Perform a Trademark Search?

Defining the class of trademark you wish to register is the first step of performing your search. Once you have found the right class, you can visit your country's Trademark Office in person to complete your search. It's important to use different combinations when searching, which may provide you with fuller results. Not every country provides an online trademark search tool, which is why you may need to visit your trademark office in person.

Do I Need an Attorney to Perform a Trademark Search?

Fortunately, if you have experience with trademarks, you will not need to hire an attorney to help with your search. However, if you're worried about the success of your search, hiring an attorney is usually a good idea.

What Are Ways to Avoid Common Pitfalls?

It's possible that your trademark application will be rejected if:

  • Your mark is similar to an existing mark.
  • You've used a similar marketing strategy for your mark.
  • Your description of your service was unoriginal and may cause confusion.
  • Your mark is in some way misleading or deceptive.
  • Your mark is a family surname or a person.

There are also several pitfalls you should avoid in your application, including:

  • Failing to develop a strong trademark.
  • Using vulgar or profane language in your mark.
  • Forgetting to trademark a slogan or your internet address.
  • Not taking the time to search for registered, unregistered, and common law trademarks.
  • Not responding to all Trademark Office Actions.

What Happens if My Trademark is Already Filed or Registered?

If your search reveals that another person or business has already registered your trademark or submitted an application, then they will own the mark. In some countries, common law gives people property rights simply by using a trademark, and even if you file for a trademark registration, the person to first use the mark retains these rights. If the mark was only used for a limited amount of time, you may be able to submit an application, although it has a strong likelihood of rejection.

If you need help performing an American trademark search, you can post your legal needs on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.