Trademark Search and Registration

Trademark search and registration are two important steps toward securing a proper trademark and protecting your rights to use it. Conducting a thorough search will also help you avoid the risk of infringing on someone else's trademark.

An Overview of Trademark Registration

Small business owners may have an interest in protecting their brands. They know that the name of their service or product is important to the success of their business. Registering a trademark with the United States Patent and Trademark Office (USPTO) provides a number of crucial legal protections.

Registering with the Secretary of State Office in your state doesn't mean that another entity doesn't already have rights to a mark. The Secretary of State typically only looks at its database of registered trademarks and those marks registered at the USPTO when it considers registration applications.

Depending on the state, it may not search assumed name records in different counties or statewide. It also may not check corporation names or other filing entities. The state might not check internet records, phone books, or other “common law” trademark uses in commerce.

If you wish to register a trademark, you're solely responsible for conducting a substantial and thorough search so that you don't commit trademark infringement.

Benefits of Federal Registration

You should decide if you need to register a trademark to begin with.  If you decide to register, you'll enjoy a number of benefits.

  • One of the most important benefits is that you can bring a lawsuit against someone who uses your mark without permission, including the creation of counterfeit designs of your mark.
  • You'll be able to use the trademark symbol with your brand, which serves as a warning to other parties to not use your mark. They'll be aware that they face potential legal action if they go ahead and use it.
  • You'll have the ability to license and sell your brand as well, which can prove to be very lucrative.

Perform a Search

A search is a very important step toward registering a trademark. A proper, complete search is key to ensuring that you're not using another party's name or likeness. Check to see if the trademark you want to use is registered by another party. If someone else holds rights to the mark you want, you may ask the trademark holder for permission to register your own.

Because trademark law can be complicated, you might want to consult with an attorney who practices in the intellectual property field.

File Your Trademark Application

Filing your application to register a trademark will be the most time-sensitive portion of the process. You can file online via the USPTO, using the TEAS, or Trademark Electronic Application System. You'll have to carefully follow all rules and requirements (including fee payments) to have your application approved.

After Submitting Your Application

This is when the waiting begins, so be patient. After you submit your application, you'll have a number assigned to your case, and it will be reviewed.

You may need to hire legal assistance if another party has objections to your trademark (for example, they claim infringement). A professional skilled in these matters can help you resolve any dispute.

Reasons to Conduct a Trademark Search

Under common law in the U.S., someone can lay claim to a trademark if he or she wishes to use it. Some people rush into using a name or mark without checking for legal clearance. They create publicity and marketing campaigns, pouring time and resources into them, only to find out later that they can't use the name.

To avoid the risk of infringement and litigation in the future, it's wise to conduct a Comprehensive Search Study before registering a trademark or doing business with it.

Although it's time-consuming to conduct a trademark search, it's a vital step toward avoiding roadblocks and potential legal hassles in the future. You don't want the headache that can result from infringing on someone else's trademark. Registering a mark gives you important legal protections as well. If the issues related to trademark law are too complicated for you, reach out to a professional in the field. That way, you'll get the right information and helpful guidance you need.

If you need help with trademark search and registration, 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.