As a business owner, you know that protecting your brand is essential. A trademark is one of the best ways to do that, and today we're going to show you how to conduct a trademark search.
But first, let's jump into what a trademark is, what you can and cannot trademark, and the benefits of having a trademark.
What is a Trademark?
A trademark is any distinguishable word, phrase, symbol, or design (or a combination of these) that identifies your goods or services and set you apart from competitors in the marketplace. As a result, customers will be able to recognize you easier with a trademark.
A service mark is a brand name used to identify goods or services. A service mark is applied to services rather than items.
A trademark:
- Identifies the origin of your goods or services.
- Your brand will be legally protected.
- Assists you in detecting counterfeiting and fraud.
Many people incorrectly believe that owning a trademark gives them the right to prevent others from using the word or phrase. In reality, you don't have any rights to the general term, only rights over how it's utilized with your product or service.
Let's say you're a small photography company, and you trademark your logo as a way to identify and distinguish your products or services from those in the industry. This does not, however, give you the right to prevent others from using a similar logo for non-photography-related goods or services. Another widespread misconception is that utilizing a common phrase as your brand name is sufficient. More effective and easier to preserve are creative and distinctive trademarks.
What Can You Trademark?
Consider some of your favorite companies and how well each is recognized in the market. Have they chosen a memorable company name? Maybe their logo piques your attention. Perhaps you notice a distinctive flavor from your favorite dessert in a mall or airport food court. Yes, all of these instances, as well as many more, may be registered trademarks. The USPTO now accepts trademark applications for the following:
- Logos
- Slogans
- Color schemes
- Smells
- Sounds
To safeguard your brand, most businesses need more than one trademark registration. Many companies tend to start with a trademark for their business name--which is excellent--but don't forget about other possible candidates for trademarks, like your logo, slogan, or color scheme. All of these would require their own respective registrations. If you're unsure which parts of your business should be considered for trademarking, work with a licensed trademark attorney.
What Can't You Trademark?
You can trademark just about everything, but there are a few things you can't trademark. For example, to prevent false advertising, some products aren't allowed to be trademarked because they are too generic. Here are seven trademarks that cannot be registered for trademark protection.
- Without that person's consent, you cannot register trademarks or words that describe or refer to a living person.
- You can't register marks that represent flags or seals of states, nations, or other organizations.
- You cannot register trademarks that are already offensive or obscene.
- You cannot register trademarks for generic words that only describe a type of product or service. For example, you can't trademark the word "lamp" if you make lamps.
- You cannot register marks that are deceptively geographic. So, you can't trademark Texas hats if they're actually made in Pennsylvania.
- You cannot register marks that would be reasonably considered to mislead people about the product or service.
- Without permission, you may not register marks that mislead consumers into believing the item or service is connected to a person or company.
How to Perform a Trademark Search?
There are seven easy steps involved in conducting a trademark search.
Learn how to use the Trademark Electronic Search System
A trademark search is an important part of the trademark registration process. The search helps to determine whether there are any existing trademarks that may conflict with your proposed mark. Therefore, it is important to conduct a thorough search before investing time and money in a mark that may already be in use. Fortunately, the USPTO offers a free online search tool called the Trademark Electronic Search System (TESS).
TESS allows users to search for both registered and unregistered trademarks. When searching for registered marks, using the correct trademark class is important. The correct class will depend on the goods or services that will be associated with the mark. Once you have selected the appropriate class, you can begin your search by entering keywords or phrases related to your mark.
If you find a similar mark that is already registered, you will need to choose a different mark for your product or service. However, you can proceed with the trademark registration process if you do not find any conflicting marks.
Read Through the USPTO Guidelines
Registering a trademark is important for any business or individual seeking to protect their brand. However, the process can be confusing and time-consuming, so it's important to be prepared before starting the application process. One of the best ways to do this is to read through the USPTO's Trademark Registration Guidelines.
These guidelines provide detailed information on what can and cannot be registered as a trademark and the necessary steps for completing the registration process. By reading through these guidelines, you can save yourself a lot of time and frustration during the registration process.
Use the Trademark Electronic Search System (TESS)
The Trademark Electronic Search System, or TESS, is a database maintained by the United States Patent and Trademark Office. TESS allows users to search for trademarks that have been registered with the USPTO. The database can be searched by mark, owner, or serial number. TESS also allows users to browse registered trademarks by category.
The USPTO recommends that potential trademark owners use TESS to conduct a search before applying for registration. This is because applicants may not register a trademark if it is too similar to an existing mark. By searching TESS, applicants can avoid wasting time and money on an application that is likely to be rejected.
In addition, TESS can be used to monitor existing trademarks and track changes in ownership.
Select Your Search Preference
The USPTO offers two different types of trademark searches: the Basic Word Mark Search and the Full-Text Search.
- The Basic Word Mark Search allows users to search for marks that contain a specific word or phrase. This type of search is best for marks that are made up of a single word or short phrase.
- The Full-Text Search allows users to search for marks that contain a specific word or phrase and variations of that word or phrase. This type of search is best for more complex marks, such as those containing multiple words or common misspellings.
Both types of searches can be conducted using the TESS database.
Adjust & Filter the Fields
After selecting your search preference, you will be able to further refine your search by adjusting and filtering the fields. The fields that can be adjusted and filtered include:
- Mark Type: Allows users to specify the type of mark they are searching for. The options include words, logos, and slogans.
- Standard Character Claim: Searches for marks that are not stylized or have special characters.
- Live/Dead: Refers to the status of the trademark. "Live" trademarks are currently in use, while "dead" trademarks are no longer in use.
- Registration Number: Specifies the registration number of the mark being searched for.
- Owner Name: Searches for marks that a specific individual or company owns.
- Applicant Name: Searches for marks that have been applied for by a specific individual or company.
- Attorney's Name: Searches for marks associated with a specific attorney.
- Pseudo Mark: A pseudo mark is a word or phrase not currently being used as a trademark but similar to a mark already registered.
Review the Results
After conducting a search, you will be presented with a list of results. The results will include information on the mark, the owner, the registration number, and the filing date.
If you find a mark similar to yours, you should contact an experienced trademark attorney to discuss your options. Do not attempt to contact the owner of the mark yourself, as this could be considered trademark infringement.
Research & Analyze State Records
While the USPTO does not maintain a state-by-state database of trademarks, you can find information on state-registered trademarks by searching for the mark in the secretary of state's office where the business is registered.
Some states also have their own trademark databases that can be searched. For example, the California Secretary of State's Office maintains a database of state-registered trademarks.
Check Common Law Uses
Even if a trademark is not registered, it may still be protected under common law. Common law protection is based on use rather than registration. This means that even if a mark is not registered with the USPTO, the owner may still be able to prevent others from using it.
To see if a mark is protected under common law, you can search for the mark in business directories, newspapers, and other sources.
In summary, conducting a thorough trademark search is a multifaceted process, involving careful research, utilization of valuable tools like TESS, and an understanding of the legal guidelines. By diligently following these steps, you're taking proactive measures to protect your brand and ensure its uniqueness in the marketplace. Remember, the key to a successful trademark search is thoroughness and attention to detail, which ultimately contribute to the longevity and success of your business.
