Conducting a trademark search is the first step of the trademark registration process. The purpose of a trademark search is to:
1. Identify companies who are already using your potential trademark
2. Identify similar trademarks that may prevent your application from being accepted
3. Assess the likelihood of a successful registration
4. Identify possible filing strategies to increase the chances of a successful registration
5. Reduce the risk of trademark infringement
Where to Search Trademarks
The USPTO TESS Database (Trademark Electronic Search System) is the primary database used to find information about U.S federal registered trademarks. The TESS Database is free to use and can be accessed online. You don’t have to be an attorney to use it, however the search results will not be very useful for those without knowledge of the TMEP (Trademark Manual of Examining Procedure).
Doing a Google search and a domain name registration search are both quick and effective ways to get information on others who may have common law rights to your proposed trademark. If another company is found using your trademark, you can also cross-reference The USPTO’s TESS Database and search by the company’s name to see if they own a current trademark registration.
Depending on the nature of your goods or services, an international trademark search may be appropriate. The World Intellectual Property Organization (WIPO) and The Canadian Intellectual Property Office (CIPO) both maintain searchable databases that can be used much like the USPTO’s TESS Database.
Some U.S. states maintain searchable trademark databases and others do not. The USPTO maintains a list of state trademark resources here.
How To Search the USPTO TESS Database
Clients often want to base their decision to adopt a trademark on the results of a self-administered knock-out search, rather than hiring an attorney to conduct a comprehensive search. While we encourage our clients to do their own due diligence, a basic index search (simply typing your proposed trademark into the USPTO TESS search box) is not sufficient. A knock-out search can uncover some useful information, however it’s only the first step of the trademark searching process. It’s also important to remember that the main value of a trademark search is derived a proper analysis of the search results.
Employing the proper searches is also a critical component of the trademark searching process. When searching the USPTO TESS Database it’s important to investigate the records of potentially conflicting trademarks, examine TSDR reports for previously registered similar trademarks, search within the class and coordinated classes for which you seek to register your mark, search for pseudo marks and trademarks with similar spellings or meanings, conduct truncation searches, among other searches depending on the nature of the mark. Conducting these advanced searches and interpreting the results is why trademark attorneys are so valuable. A small investment in some initial trademark due diligence is likely to cost much less than refilling one application or even responding to one trademark infringement cease and desist letter.
Trademark Searching for Logos and Stylized Design Marks
The process for searching logos, stylized design trademarks, and trademarks with pictoral elements is slightly more complex. The USPTO has a coding system that assigns numeric codes to different categories of pictures such as humans, animals, plants, foods, toys and other common items. When a trademark application is filed with the USPTO, the examining attorney will code the logo taking into consideration the pictoral elements of the trademark. These codes are searchable by future applicants, thus if you wanted to search for all logos containing an elephant image it’s possible to do so. If the mark contains literal elements such as words, letters or numbers those can be searched the same way that wordmarks are searched.
Final Thoughts
As with any investment, it’s important to do your homework. Before you print those business cards and start building that website, we encourage you to contact us for a trademark search.