One of the most common questions I’m asked about trademarks is how to find out if a trademark is available. Unfortunately, it’s a question I’m often asked too late in the process and not before my clients begin using their marks with their brands. Usually the client is already using the mark and they’re just now going to register it. But every so often, I’ll get a call from an enlightened client (who must have been reading one of my blog posts) about trademark availability before they actually start using the mark.
So the process for determining whether a trademark is available is a fairly straightforward one. All you need is a trademark search or two. Simple enough, right?
Not so fast. Trademark searches can be tedious. If you’ve never seen the interface for the United States Patent and Trademark Office’s (USPTO) trademark search, known as TESS, you should take a look and then come back here. It’s nothing like Google and daunting is a good word to describe it. Issues with design and functionality aside, TESS is a good starting point for people looking to see if their trademarks are available for use.
Let’s do an example search for something interesting. Say you’re interested in wristwatches and you want to develop your own brand. You’re about to launch a new Kickstarter campaign to help you crowdfund your venture, which you’re going to call OhhMega, but before you do you realize you’d better see if any other watch makers are currently using the same mark as you. So you start with a Google search to determine if anyone’s already using that word. Nope, just some kid on Twitter who hasn’t posted for about four years now. Then, because you’ve read other posts on the importance of trademark searching, you head over to TESS to do a quick search for an exact match of your brand’s name. We trademark attorneys call these kinds of exact match searches “knockout searches.”
You don’t have a logo yet, so you select the option for a Basic Word Mark Search for new users since you don’t know anything about how to use operators in the search or anything like that. You just want to find out if OhhMega is currently registered. A few keystrokes later, and you see that TESS returned no results. Not surprising since OhhMega is a really weird way to spell omega. Congratulations, your very basic search is complete.
But as any good watch enthusiast knows, there is a watch brand out there called Omega. They’re very famous, have some impeccable designs, and have been around in one form or another for about a century—but I digress. In fact, they have a rather old trademark, Registration Number 0025036, dating back to 1894, along with a slew of other marks registered for their specific models and changes to the look of their logo. As you can see from our example above, your knockout search would not have been able to discover even such a well known, famous mark. And that’s why you need more than just a knockout search to determine if your trademark is available.
Now, as a trademark attorney, I’m apt to tell you to that you really need to hire a trademark professional to conduct this search for you. And even if I wasn’t a trademark attorney, I would still tell you the same thing. The truth is that trademark searches are incredibly important, and can mean the difference not just between getting your trademark registered or not, but the difference between finding yourself faced with a demand letter to rebrand your business or face a very costly trademark infringement suit. That’s why a proper trademark search to determine the availability of your mark includes not just a knockout search through TESS, but a full-on trademark search through TESS, a search through the state trademark databases, a search through the World Intellectual Property Organization’s database of international trademarks, and a search through common law trademarks (those trademarks that are used by local businesses, online or whatnot, but are not registered with any governmental organizations—and yes, they may still have rights even though they never bothered to register their marks). And for all of those searches, you’ll need to conduct it using other phonetically similar searches, which, in the case of the OhhMega watch company, would mean searching for Omega since they sound the same even though they’re spelled differently.
So as you can see from our little example, a knockout search is not enough. A quick googling (yes, I’m helping to perpetuate genericide on Google’s trademark) is not enough. A comprehensive clearance search is what you need if you’re serious about your brand and you want to make sure your trademark is available before you begin using it. Ultimately, the few hundred dollars you spend now on a trademark search conducted by a professional is well worth it when compared to the possibility of facing hundreds of thousands of dollars in liability for trademark infringement or tens of thousands to millions of dollars in rebranding.
However, one thing a trademark search cannot tell you is whether you should go ahead and register your trademark if there is a problem with the search. Maybe the search came up with a result that’s very similar to yours but is currently being used in a completely different market. For example, you’re selling telephones and the current user is making mattresses. Or maybe the search found something that looks like it’s not being used but is still a live mark with the USPTO. When these kinds of issues arise, it’s time to sit down for a nice chat with your trademark attorney for a discussion on how to proceed, as the answer to whether you’ll be able to register your trademark at that point will depend on a mix of sound legal advice and savvy business judgment.
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