Conducting a trademark search is the first step of the trademark registration process. The purpose of a trademark search is to:
- Identify companies who are already using your potential trademark
- Identify similar trademarks that may prevent your application from being accepted
- Assess the likelihood of a successful registration
- Identify possibly filing strategies to increase the chances of a successful registration
- 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 federally 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 are much more useful to those who posess advanced knowledge of trademark law.
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 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 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, which is why experience in trademark law is helpful.
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 essential 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 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.
As with any investment, it’s important to do your homework in advance. Before you print those business cards and start building that website we encourage our clients to do their own trademark search and contact us if they find any similar trademarks that are being used for similar goods and services.