1. Why Should I Do a Trademark Search?
2. Trademark Rules
3. Do I Need a Lawyer to Perform a Search for a Trademark?
4. What Are Some Reasons for Application Refusals?
5. What Happens if My Trademark is Already Registered or Filed?

Searching for a trademark or name helps avoid legal problems by making sure they are not in use before registering them.

People sometimes use names and trademarks without checking to see if someone else is already using them. All too often, people use a name without knowing if they have the legal right to do so, and they'll start a big marketing campaign with a name they find that they are not legally allowed to use. 

It's simply a good idea to do a comprehensive search before you decide to register your trademark or name. You reduce the risk of litigation in the future when your trademark is registered. Besides, you might find that another company is already conducting business in the same class as yours. That company may object to your use of the trademark and stop you from using the mark through the court system. 

Trademark Rules

It is not legally necessary to register a trademark with the United States Patent and Trademark Office (USPTO). Common law protects the mark owner by preventing a competing business from using the mark. However, registering the trademark is the most reliable means of protection and is easier to enforce in court. 

When you decide to register, you must use classifications to cover the definition of your business. During your search, consider looking at overlapping classifications that also describe your business, goods, or services. You may want to consider coordinated classes, since the choice of one or more categories does have an impact on the acceptance or rejection of your application. Also look into classes that help you protect your long-term goals. The right choice of a class does more than increase the chances of acceptance; it also helps you defend against infringement in the future.

You need to make sure you include the appropriate trademark class designation when you fill out the application. This is due to the fact that almost all trademark offices around the globe use these kinds of groupings to search for potential infringement issues. 

Do I Need a Lawyer to Perform a Search for a Trademark?

You don't necessarily need an attorney for your trademark search, but it's strongly suggested you get help from a professional if you have little or no experience with researching trademarks. The advantage to retaining a lawyer to help you with your search is that you gain access to someone who can give you a legal opinion on whether your mark is safe to use without risk of infringement. 

What Are Some Reasons for Application Refusals?

Here are some common reasons applications for trademarks or names are refused:

  • Marks or names are similar in use or marketing approach to another business.
  • They are similar to marks already in existence in sound, appearance, or meaning.
  • They make a non-original approach to or description of a product, geographic location, or service that's easily confused with other brands.
  • They are misleading, deceptive, or confusing.
  • They are the surname of an individual or family.

In the event your application is rejected, the USPTO will not reimburse the fees that you paid when you applied. 

What Happens if My Trademark is Already Registered or Filed?

In the event you find that another company has an application pending or has already registered a trademark, and that company shares common business elements or products with yours, it has priority over the mark. If the current owner of the mark used their trademark for a limited time in a limited geographical area, you may have the opportunity to resubmit an application with the USPTO. However, keep in mind that your application comes with very high odds for rejection. 

Searching only within the USPTO database doesn't mean you have superior rights to the mark. There may be another entity that's already using a similar trademark but hasn't registered it with the USPTO. In this scenario, you can go ahead and register your mark, but you may be at risk of a legal challenge by the first owner of the mark because of common law trademark rights. 

Another scenario involves an entity filing its mark with the state it operates in, or it has obtained rights to use the mark in certain geographic regions. Common law rights only apply to the geographic area where you use the mark as opposed to the national level of protection you get when you register your trademark. 

If you need help with a trademark search name, 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.