Why Do I Need to Perform a Trademark Search?

An online trademark search is one of the most important steps in registering a trademark.

If you have a name for a product or service, you need to make sure that the name you've chosen is available for use. Using a registered trademark name, even unintentionally, can have serious consequences. Common law in the United States gives people ownership of a trademark just by using the mark.

Formal trademark registration, while recommended, is not required. However, if you want to make sure that you aren't infringing on someone else's trademark, it's crucial that you perform a trademark search. Searching for trademarks can also prevent you from wasting money trying to register a trademark that has already been claimed.

It's extremely common for people to use a trademark name without checking to see if they are legally allowed to do so. As you might expect, this has the potential of resulting in money lost on a marketing campaign for an already registered trademark. If you want to avoid the possibility of future litigation, then a comprehensive trademark search is a good idea.

You should always conduct a study before you start using a trademark, particularly if you wish to use your mark for commercial purposes. Using a mark that is already being used by another company in your class may result in a lawsuit and a loss of the ability to use your desired mark.

What Is a Preliminary Trademark Search?

Before you spend money on a trademark, you need to perform a preliminary trademark search.

There are several free online sources you could use to search for trademarks, including the United States Patent and Trademark Office's (USPTO) Trademark Electronic Search System (TESS). However, if you don't have any experience with trademarks, these tools can be very difficult to use.

Your preliminary trademark search is an important step in making sure you are legally allowed to use your trademark. Disappointingly, even if you don't find any conflicting trademarks during your search, your application may still be rejected.

Those who are not familiar with searching for trademarks may need professional help from a trademark attorney.

How Do I Perform a Trademark Search?

To make sure your search is effective, you must first define the class of your trademark. Using the Trademark Class Search tool is the easiest way to find your trademark's class. Simply enter your service or product, and the appropriate class will be displayed. After you know the class of your trademark, you can search in person at your country's Trademark Office or use one of the many available online tools. Remember, however, that not every country offers an online database for trademark searches.

Do I Need an Attorney to Perform a Trademark Search?

It's entirely possible to complete your trademark search on your own. That being said, investing in a trademark attorney can be a good choice if you have little to no trademark experience.

Where Can I Perform a Trademark Search?

You can use the TESS system or Trademark Search engine to complete your trademark search. If you have an attorney on your side, your search will usually be more effective. The trademark application process is very complicated, and if you miss a step or do something incorrectly, it can delay your approval by several months.

Due to the number of common law and unregistered trademarks, an online trademark search is essential. In addition to registering your trademark domestically, you may want to perform a global trademark search if you plan on offering your products in international markets.

Remember that a comprehensive search does not guarantee your trademark will be approved.

What Are Ways to Avoid Common Pitfalls?

Avoiding pitfalls that would result in a rejected application is easy so long as you:

  • Create a trademark that is strong and fanciful without being generic.
  • Refrain from using profane or vulgar words or phrases in your trademark.
  • Trademark your product's slogan, tagline, and internet domain.
  • Perform a trademark search that includes all trademarks, whether registered, unregistered, or common law.
  • Respond to USPTO Actions in a timely manner.

What Happens if My Trademark Is Already Registered?

If the trademark you wish to use has been registered by another company, you will need to create a new mark. The person that uses a mark first is prioritized in terms of ownership, and their rights are protected by common law.

If you need help performing an online 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.