1. Check for Registered Trademarks
2. Reasons Why You Should Run a Trademark Search
3. Avoiding Common Pitfalls
4. Strong vs. Weak Trademark
5. Performing a Trademark Search by Class

Check for Registered Trademarks

You’ll want to check for registered trademarks if you want to obtain trademark protection over your own mark. Trademarks are symbols, logos, and other names that are used to identify your business, products, or services. In order to run a search, you’ll visit the United States Patent and Trademark Office (USPTO) website.

  • Running a search will help you ensure that your mark is in fact available for use. If you begin using a mark that is already protected by a trademark, you risk a potential trademark infringement suit.
  • You may have a similarly named mark you want to use, one that is already protected. Since the name is similar, but not identical, you can still use it. But, in order to have a competitive edge over other businesses, you may want to choose a unique mark that is not being used at all by any other business.
  • A trademark infringement suit can ruin you or your business. It could costs tens of thousands of dollars to defend the lawsuit. It could cost you even more money if you need to hire a patent attorney to help defend your case. In the end, you might be left with having to change your name, which could result in lost profits. Worst of all, you may be forced to close your business’s doors.
  • Running a search will also help increase the likelihood that your trademark application will be successful. One of the primary reasons as to why a trademark application is denied is because it has a similar name to another mark that is already protected. If there is a likelihood of confusion between the two marks, then your application will likely not be successful.

Avoiding Common Pitfalls

Common pitfalls to registering a trademark include a similar mark (as previously noted). Other things to keep in mind when choosing a mark for protection include:

  • Choosing a mark that is strong and suggestive. For example, if you are operating in a certain industry, you’ll want to choose a mark that identifies the type of product or service you are offering. You don’t want potential clients or customers to be confused as to what you are offering.
  • Don’t use any vulgar phrases.
  • You should consider also trademarking your Internet domain name to ensure that no others attempt to use a similar domain name.

Strong vs. Weak Trademark

  • Commonly used words are weak trademarks. Such words are not unique and generally are hard to defend if you want to bring or defend a trademark infringement case.
  • Words that do not correlate to the type of goods or services that you are offering would also be a weak trademark.
  • Trademarks that are easy to counterfeit are also weak marks.
  • You could always speak to an attorney if you are unsure as to whether or not the trademark is strong or weak.
  • Strong trademarks are ones that are unique and different from any prior issued trademarks.
  • Your trademark should be closely defined by the type of good or service you are providing.

Performing a Trademark Search by Class

Trademarks are classified into 45 categories, which can be found in the Nice Agreement on the World Intellectual Property Organization (WIPO) website. While the classifications are required, they can be a bit confusing and even misleading. The categories are quite generic, and your mark may fit into more than one category. First, you’ll want to begin with your primary business. Think about the item you have or the service you are offering. Look through the categories and see if you can find the one that most closely fits to your mark.

Choosing the appropriate class will help you defend potential future infringement cases. You could also submit your mark into other classes if you believe that your goods or services fall into more than one category. Your choice of classes will play a key role in the likelihood of success when submitting your trademark application. 

If you need help with filing for trademark protection or searching prior trademarks, you can post your legal need 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, Menlo Ventures, and Airbnb.