Before you create signs, brochures, letterhead, or other advertising related to your product or company, you'll need to search trademarks of other companies to confirm that your trademark is available. Do the search first, and you will eliminate the possibility of wasting your time and money investing in a trademark that you can't even use.
Why do I need to do search for other trademarks?
Trademark law is, in essence, all about avoiding consumer confusion. If there are two businesses in the same area, using the same or similar trademarks (particularly for a similar product), consumers may be confused as to which product they are purchasing.
In trademark law, first in time equals first in right. Once a trademark is "in use" (meaning it is used in commerce), that user retains protection from other businesses that sprout up after it using the same or similar mark. Doing a trademark search will prevent you from choosing a trademark that infringes upon another's right to use the mark, thus saving you time, energy, and money.
Keep in mind that there are two levels of trademark protection. For federally registered marks, the owner of the trademark gains protection for that mark nationwide, even if the owner is not doing business across the entire nation. This is the easiest type of mark to avoid because you can simply search the U.S. Patent and Trademark Office (USPTO) website and get the results. And avoiding federally registered marks is paramount because the improper use of such a mark may result in large damages plus the owner's attorney's fees.
The second type of protection is called common law protection, and it encompasses everything not federally registered. This is where the bulk of trademarks, and the disputes that come with them, exist. Because they are not federally registered, and therefore not as easily searchable, there could be similar marks already "in use" that preclude you from using yours. Or, there could be a similar mark being used in a market in which you expect to expand. You can avoid the headache of potential future litigation if you simply change your trademark right now.
Trademark searches are necessary to avoid costly court battles, consumer confusion (you don't want customers thinking another inferior product is yours), and poor capital investment in a trademark that you may not even use.
Is it possible to do my own trademark search?
Yes. While there are companies that specialize in trademark searches (more below), you can, and should, do trademark searches on your own. It's a cost-free, yet effective, method of determining whether a previous trademark user predates your mark. (Remember: first in time equals first in right).
What methods and resources are useful in a self-search?
The first place you should look is the USPTO website, where you can do free searches for federally registered marks. Federally registered trademarks are afforded nationwide use of the mark, even if the mark is not in use nationwide, and they are considered as giving "constructive notice" to all future users. Constructive notice simply means that you can't claim that you weren't aware of the trademark. Because it's federally registered, you are expected to know it is being used and improper use can result in an award of damages and attorney's fees.
If you are close to a location, you can also visit the Patent and Trademark Depository Libraries (PTDLs), which have branches in every state. PTDLs have paper directories of federal trademarks as well as online databases of registered and pending trademark registrations. PTDLs are also useful because they have product guides and other resources to search for similar trademarks in addition to exact matches. Investigating the existence of similar sounding (or looking) trademarks is important because you may be precluded from using your mark if there is such a mark in use that could cause consumer confusion. (Keep in mind that consumer confusion is determined by the courtsdon't assume that because you think consumers could tell the difference that a court, or the owner of the existing similar mark, would agree.)
You can also do simple Internet searches of your mark and similar sounding marks. If your mark is in a product for sale, you can go to a retail site which carries similar products and do a search for trademarks which are similar to yours. If your mark is for a service, you can do the same at a site which lists those services. For example, if your trademark is for a camera, you can go to Best Buy or Google Shopping to see if there is a mark similar to yours.
There are also free and fee-based trademark search engines. The most recognized is Saegis, which is fee-based, but there are others which distill the USPTO information and offer additional search options for free.
While these searches can yield important information, they cannot give you legal advice on whether your trademark is likely to infringe upon another's similar or identical trademark or whether there may be issues with another trademark user down in the future. For this, you'll need to do additional research and/or consult with an attorney.
What if a company in another part of the country is using a similar trademark?
The quick and dirty answer is if you are in geographically disparate locations, you're likely, legally, in the clear, as long as the other mark isn't federally registered. Two big caveats are that 1) if one or both companies/products expand their reach, there could be trouble; and 2) the Internet muddies what the law has traditionally considered geographically disparate.
For example, two local hair salons, one in Illinois and the other in Florida, sell a shampoo in their geographic areas with the same name and neither mark is federally registered. They may both continue to sell their shampoo within their geographic location. However, if the Illinois brand expands its sales to Florida, legal challenges will loom for both sides. If neither is afforded federal protection, then the most likely outcome is that the Florida product will be "locked-in" for its geographic location.
The Internet also throws a monkey wrench into the situation. Let's say that the Illinois brand has a website through which it sells its product to the entire country. Traditionally, the law focused on geographic location based upon the location of sales, but with the advent of the internet, a small company in Illinois could have a worldwide presence. The safe play is that if you see a similar trademark for a similar product based in the U.S. being sold on the Internet, you should consider other marks or risk an infringement lawsuit. If you are dead set on using the mark, you should consult an attorney.
What if I want a professional to do a trademark search for me?
There are professional search firms which specialize in trademark searches and are very useful to companies that expect to have a large initial capital investment in the development of their mark. Search firms charge thousands of dollars and find both registered and unregistered trademarks as well as similar sounding/looking marks. The most respected and well known such firm is Thomson Compumark.
Can an Attorney Help?
Even if you use a professional search firm, you will most likely want the opinion of an attorney to guide you with respect to the safe use of your proposed trademark in light of your trademark search results. You can also have a lawyer arrange for the use of a search firm. Find a trademark law attorney near you to get started.
See FindLaw's Trademarks section for additional articles.
