Searching for a US Trademark in 2022: All You Need to Know
If you’re running a business, a trademark isn’t just something nice to have—it’s an essential part of your branding and identity. It protects your intellectual property against infringement and fraud.
To help you get a better idea of trademarks, search for a US trademark or similar trademarks, and more, we’ve created this handy guide.
The United States Patent and Trademark Office (USPTO) defines a trademark as any element, such as a word, phrase, design, or combination that serves as a primary identifier for your brand and the products or services you’re offering.
It essentially serves as an identifier that helps distinguish a brand from others. It can be associated with a company’s reputation, values, and beliefs and has the potential to acquire goodwill over time.
Benefits of a Trademark and Trademark Registration
Once you start using your trademark, you become its owner. While this establishes your rights to the trademark, these rights are limited and only applicable to the region where you’re offering your products or services.
When your competitors or other companies, in general, use similar words, symbols, devices, or other identifiers, this can potentially create confusion among your target audience, which, in turn, can drive them away from your business and toward your competitors. By having a trademark and registering it with the USPTO, you can take legal action against potential or actual infringement.
Furthermore, registering a distinctive trademark can help potential customers find your business. A registered trademark can help you stand out in a sea of competition because it makes you easy to find, whether online or in physical locations.
Registering a trademark also gives a company the right to use symbols such as “TM,” “SM,” or ®. These symbols tell your audience that you’re duly registered with the USPTO. More importantly, these symbols can give a brand more credibility and can serve as a deterrent for infringement or fraud. A registered trademark can help build brand loyalty and give companies a stronger customer base.
It’s worth noting that while you’re not required to register your trademark, doing so can help you create nationwide rights for it.
Why Conduct a Trademark Search?
Creating a brand and the identifiers that go with it can be very exciting. However, because of all the excitement, you might miss out on doing one crucial thing to protect your asset: Conducting a trademark search.
A trademark search is an integral part of using and registering a trademark. It’s a database search that helps you check whether or not a mark is currently commercially used. It’s also an often overlooked step that can help you avoid legal and financial problems in the future.
Additionally, a robust trademark search can help improve your chances of successful trademark registration. One of the most critical steps in applying for a trademark registration involves a USPTO examining attorney reviewing your application. If your mark happens to have a duplicate or comes across as confusing, then your application might be rejected. Note that the USPTO will not refund your filing fees.
A trademark search also helps avoid creating confusion among your customers in the future as it allows you to identify and refrain from using existing marks that may be similar to the one you’re using.
How to Perform a US Trademark Search
The great thing is, performing a US trademark search is now more accessible. You can use the free tool of Nominus.com US Trademark Search or alternatively, use the USPTO Trademark Electronic Search System (TESS) that you can use to conduct a US trademark search. TESS lets you check if a registered trademark or a pending trademark application is live, currently being used on similar or related goods or services, or similar to yours.
If a trademark meets these three criteria, then your brand will not be registered to prevent the likelihood of confusion.
You can also visit the Public Search Facility (PSF) in Alexandria, Virginia. It provides public access to trademark information and other relevant materials. Using the PSF’s automated systems and copying paper documents are free. However, online printing fees may be collected.
There are several types of US trademark searches:
Federal trademark search
The federal trademark search is also known as the USPTO search. It involves a knock-out search. With this search type, you’re using the USPTO database to search for exact or close matches, which, in turn, helps you determine whether or not your trademark will be accepted when you’re applying for trademark registration.
When conducting a federal trademark search, you need to consider phonetic similarities in marks, its equivalent in foreign languages, or marks that may have the same meaning as yours.
State trademark search
The USPTO search is the initial step. Once cleared, you can proceed to a state trademark search, which lets you check for trademarks in state government databases.
Common law trademark search
Common law trademarks are marks that haven’t been registered with the state or federal level. Common law trademark search helps ensure that a different company hasn’t used the trademark before you.
It’s important to know that when doing a US trademark search, you shouldn’t just conduct one on a federal level and leave it at that. Not doing a robust state and common law trademark search can be very risky. The bottom line is that regardless of the trademark search, it will take a lot of time to ensure that your trademark is free to use and doesn’t infringe on another party’s rights.
Furthermore, trademark searches can fall into six categories:
1. Identical trademark search. It identifies marks with visual or phonetic similarities.
2. Similar trademark search. It identifies marks that are considered identical or confusing.
3. Search with advice. Also known as “trademark search with an option,” this involves an attorney making recommendations based on prior marks identified.
4. Index search. This helps users look for companies that may have identical or similar names.
5. In-use verification search. This is used to determine whether or not a third party that has prior rights to the mark is using the said mark properly. This helps interested users find potential grounds that they can use to challenge another entity’s trademark registration.
6. Trade name search. This is a search used to identify trade name rights that may come into conflict with your desired mark. This search category lets users look for companies that have similar or identical names to your search terms.
US Trademark Search Steps
We’ve outlined the steps for a US trademark search below:
1. Use the free tool of Nominus.com US Trademark Search to see if your trademark is available.
2. Choose the search option you want to use. When you log into TESS, you’ll see five options:
A. Basic Word Mark Search
B. Word and Design Mark Search (Structured)
C. Word and Design Mark Search (Free Form)
D. Browse Dictionary
E. Search OG (for Publication Date or Registration Date)
3. If you want search flexibility, use the free-form version of the Word and Design Mark Search.
4. Identify your search term (applicable to all search options except for the dictionary option, which requires you to identify the “dictionary term” you want to search for). When searching, try to be thorough with your parameters and consider using partial matches of your search terms.
The Importance of Building an Effective Search Strategy
The TESS contains millions of trademarks. To make the most out of your search, you need an effective search strategy. Your search should be able to find all the marks that may cause a likelihood of confusion with your mark while yielding a manageable number of results.
To make your search more targeted and effective, you can use:
Classification of goods and services. TESS currently has 45 classes for goods and services. The first 34 categories are for goods, such as machinery, hand tools, rubber goods, and jewelry, while classes 35 to 45 cover services, such as hotels and restaurants, advertising and business, and telecommunication. Knowing your classification can help you narrow your search to related products or services.
Design search codes. These are six-digit numbers used to classify the different design elements found in a trademark. If your intended mark uses a logo or image, then you can use design search codes to look for marks with specific design elements.
Considerations When Performing a US Trademark Search
Even if you’re conducting a search on Nominus US Search Tool or the USPTO database and get “good” results, they don’t necessarily guarantee that your mark is eligible or will be accepted by the USPTO for registration. The USPTO will still conduct its research, and your mark and application may still be rejected.
·Try searching for all the variants of your intended mark on TESS, including its singular and plural forms and phonetic equivalents.
Consider factors such as similarities in design, color scheme, or the sound of the name when doing a trademark search.
Don’t just rely on the USPTO database. You can also perform a US trademark search for domain names at ICANN.org WHEN DOING A CLEARANCE SEARCH, the USPTO recommends that you use other sources, such as US Registration Certificates or a design code, as some trademarks may not be in its database.
How to Search for Similar Trademarks
Often, trademark registration applications are rejected because they’re similar to a mark that’s already been registered, causing a likelihood of confusion among customers.
To search for similar trademarks, you need to do a clearance search using the TESS database and other sources.
You need to conduct multiple searches that involve using different variations of your mark. Start by searching for an exact name and follow it up with a search for variations. Then, carefully review the results to find marks that are identical or similar to yours. Take note of the type of goods and services they’re registered for.
Use the USPTO’s US Acceptable Identification of Goods and Services Manual to find goods and services that are similar or identical to yours.
Why Search for Similar Trademarks?
By carrying out a trademark search, you’re protecting yourself from the risk of infringing on another trademark. Knowing which trademarks already exist ensures that the name or identifier you’re thinking of using is free to use. You’ll also be able to determine whether your mark is weak or not. If your mark is weak based on trademark search results, you can modify it accordingly to make it stronger or unique.
Through the search, you’re also protecting yourself from potential losses.
Let’s say you’re already commercially using a mark and then a company comes up and proves that you’re infringing on their trademark. You’ll then be required to stop using your mark, which means you’ll have to rebrand your products or services, causing you to lose the branding and the identity you’ve created for your business and money and time.
Trademarks Used on Related Products or Services
In trademark disputes, a party can file a case against another entity that’s infringing on its trademark rights. Grounds for infringement can also be found if one company uses a logo that’s similar or identical to a protected mark.
The court will check if the mark in question is used for related products or services, such as when both parties use the same mark to sell clothing. If one mark is used to sell vehicles, while the other is used to sell leather goods, they will most likely not be considered related.
For goods or services considered as “related products or services”, the following criteria are observed:
May cause a likelihood of confusion between their respective trademarks
The intent of the opposing company using the trademark
How long both companies have been using the mark in question
Whether or not one company is competing with the other
The degree of similarity between the marks in question
Why Register Your Trademark?
Registering a trademark gives businesses added benefits, such as protection from counterfeit goods that use or infringe on your trademark, access to the country’s federal courts should you need to file an infringement lawsuit, and being listed in the USPTO’s database.
Also, if you’re thinking of expanding your business internationally, the first step is to register your trademark with the USPTO if you’re filing through the Madrid Protocol.
While the trademark application and maintenance process is relatively straightforward, it’s still a complex matter that involves several stages. The process can also be time-consuming, taking anywhere from 12 to 18 months.
The USPTO recommends that you hire a US-licensed trademark attorney to guide you through the entire process. A trademark attorney can help you file your application properly and give you legal advice. They can also assist you in enforcing and maintaining your rights and performing trademark clearance searches, thereby helping you avoid legal problems later on.
Nominus offers trademark registration services provided by experienced local trademark attorneys who ensure that your application meets all legal requirements. By working with Nominus, you’ll have access to legal defenses if your trademark application is rejected and a dedicated account manager for all communications. You’ll also be able to monitor and review the status of the service you’re requesting.
Protect your assets today with Nominus.