Checking Trademarks

Before you begin the process of applying for a trademark, it is important that you first begin with checking trademarks already in existence.

What is a Trademark?

Trademarks are one category within the larger umbrella of intellectual property rights. Obtaining a trademark is a useful way for a company to protect its unique identity, products or services.

Trademarks can be any of the following: 

  • Terms
  • Phrases
  • Logos
  • Symbols
  • Certain sounds
  • Colors
  • Smells

To apply for a trademark and its associated protection rights, you must register by filing an application with the associated national or regional trademark office. If you would like to apply for an international trademark, you must register and file an application in each country you want trademark protection. Once you receive a trademark, you will have an exclusive right to that trademark. One option that a trademark owner has is to license out the right to use the trademark to a third party. In that instance, the third party is authorized to use the trademark and will not be infringing on the owner’s rights. However, any unauthorized use of that trademark can result in an infringement suit.

Trademarks are typically valid for a period of ten years, with the option to renew a trademark in perpetuity for an additional fee.

The Importance of Prior Trademark Research

One of the first steps you should take before you begin the trademark process is to research what trademarks are already out in the world. Many people fail to do this, and as a result, they spend a considerable amount of time and money using the trademark, only to find out later that they are using it illegally. This puts you at risk of being sued for infringement, which can end up costing thousands of dollars.

If a specific trademark is already taken, you will not be able to use it for your business. In this situation, you will probably have to alter your business name (or whatever it was that is already protected by a current trademark).

A simple trademark search will show you whether or not there are any similar trademarks in existence and can help avoid unnecessary conflicts. One of the most common reasons a trademark application is rejected is due to a “likelihood of confusion” with existing trademarks. A trademark will be rejected on these grounds if the two marks are so similar that it would mislead the public into thinking they came from the same source. Conducting a registered trademark search also increases the odds that your trademark application will be granted.

The United States Patent and Trademark Office (“U.S. PTO”) trademark database will flag any similar or confusing trademarks, alerting you to any potential conflicts and allowing you to make changes or alterations to your own mark.

How to Conduct a Registered Trademark Search

Although you can conduct a registered trademark search on your own, many people and businesses hire law firms that specialize in this issue area. The best place to begin is with the U.S. Patent and Trademark Office. The U.S. PTO’s Trademark Electronic Search System (“TESS”) searches all trademarks registered with the agency and is free to the public.

In addition to searching the U.S. PTO’s search engine, you should also conduct a basic internet search to see if your mark is currently being used in a more informal way. The purpose of an initial trademark search is to get an idea of what types of similar marks already exist. In addition to exact marks, you should also check for marks that sound the same, or are spelled similarly

As a side note, it is entirely possible to have two registered trademarks that are identical, as long as the categories they fall into are totally unrelated. For example, Delta Airlines has the same name as Delta Faucets, but they are two completely unrelated sectors.

If you would like to search for a trademark name, you should use the “name search” on the U.S. PTO’s website. However, if you’d like to search for a design or symbol, you will need the design code, which you can find by searching the U.S. PTO’s Design Search Code Manual.

If you need help with checking 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, Stripe, and Twilio.