Registration Trademark Search

A registration trademark search can be conducted on the United States Patent and Trademark Office (USPTO) website. It is done to identify whether or not any similar or identical marks are already being used. Therefore, before you submit your trademark application, it is crucial to run this search to determine if you can use your mark. Before expanding your business, purchasing advertising, and buying other materials, be sure to run this search to prevent a potential trademark infringement suit.

How to Run a Trademark Search

  • Visit the USPTO website, and search on the TESS database, which can be found here.
  • If you want to search by name, you can use the ‘trademark name search’ option. If, however, you are searching by design or logo, you’ll want to conduct a design search here. This search allows you to look for plurals. Therefore, if you have a mark in mind, and a mark with an ‘s’ at the end is already being used, you will be able to identify as such by using this search feature.
  • Remember that you don’t just want to run an exact name search. You’ll also want to search similarly used names and spelling variations of your mark.
  • You’ll also want to run searches through the different classes of trademarks. Currently, there are 45 unique classes of trademarks that cover a variety of unique inventions. Be sure to run a search through the classes that your invention may belong too.
  • Once you run multiple searches, be sure to document your search results.
  • You should also run a search in the public domain to see if your mark is already being used. Remember that a mark need not necessarily be registered, as once it is being used, the holder has common law protection.
  • If you do find a similar named registered trademark, it is up to you whether or not you want to attempt submitting a trademark application. Keep in mind the implications if you do this. Your application may be rejected. Further, you may find yourself on the other end of a trademark infringement suit.

Frequently Asked Questions

1. Why do I need to run a search?

If you unknowingly, and even in good faith, begin using a trademark that is already protected, you really can’t use that good faith doctrine as a defense. The court will generally determine that you should have known that the mark was already being used. This is why a search is so important. You’ll want to run several searches to identify whether or not an identical or similar name is already registered, or even being used (common law protection applies). Furthermore, you could spend thousands of dollars marketing your name. In order to save yourself a great deal of time, money, and potential litigation battles, you’ll want to run a thorough search beforehand.

2. Do I need an attorney to help me run a search?

No, you don’t necessarily need an attorney to help you through the process. While an experienced attorney can in fact help you obtain trademark protection, you can certainly do so on your own if you have the time and resources to do so. Therefore, if you don’t have the financial ability to hire an attorney, then you need not worry. So long as you conduct your own research on the process itself, you should be just fine.

3. What is the Nice classification system? Do I need to use this?

The Nice classification system, also referred to as NCL, provides a total of 45 unique classes of services and goods. Particularly, it is broken down into 34 different types of products and 11 types of services. Since this type of classification search can be daunting, obtaining help from a licensed attorney may be the right decision for you. You will need to use this system to perform a search. This classification system is perhaps the most important database to look through, as you’ll need to ensure that you submit your trademark application using the correct class. The USPTO and most countries worldwide have adopted the NCL.

If you need help with registering your trademark 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.