Conducting a Trademark Search
It is important to search for similar trademarks because the USPTO may deny the application if the closeness of the similarities (applicable to the mark and the goods/services) would cause consumer confusion. Also, a mark owner may have a legally protected mark or trademark rights even if they have chosen not to federally register with the USPTO. Therefore before selecting and applying for registration, a thorough and well-documented search is necessary. This would include looking for identical and similar marks, especially if the marks are related to similar goods; and, one should search for unregistered marks as well as federally registered marks.
The USPTO’s website (www.uspto.gov) has a link for Trademark Electronic Search System (“TESS”), where a mark owner can search all federally registered trademarks. Also, a trademark search can be conducted at a Patent and Trademark Depository Library (PTDL) located in every state, a listing of which can be found at the USPTO website (www.uspto.gov/go/ptdl). An informal internet search through Google, Yahoo, Dogpile, AltaVista or Ask Jeeves could find some unregistered or more obscure trademarks and it is a relatively easy and cheap source to search text and images. The Yellow pages could also be used to search business’ trade names for potential conflicts. These websites could be used to search for related, similar or identical domain names, (http://www.networksolutions.com/en_US/whois/index.jhtml, http://www.namedroppers.com/). The USPTO also provides a list of each state’s links to search for state registered trademarks (http://www.uspto.gov/trademarks/process/State_Trademark_Links.jsp). Internet search sites may be a great first step, but they are not always reliable as some business do not maintain their websites or the internet search sites may not find all of the trademarks available. If the mark is still available after searching the internet, TESS and state trademark databases and there are no conflicts, then a commercial trademark search firm can conduct a more in- depth search. However, a commercial trademark search firm can be costly.
Below are some additional steps for a more in-depth search if hiring a commercial trademark search firm is not an option. Trade associations can be a good resource for locating conflicting trade names by using their trademark resources, searching trade publications (directories, magazines, etc.). General business directories should also be used, such as Thomas’ Register of American Manufacturers or McRae’s Blue Book.
Although trademark protection ends at the U.S. border, it is advisable to conduct a foreign trademark search to protect for any future possibilities of expansion into other countries. This would include searching Canada, Mexico, the UK and the European Community (oami.eu.int/en/database/ctm-online.htm).
If there is doubt as to the similarity and relevancy of other marks after conducting a thorough search or, if using a commercial search firm, after receiving their report, then it is advisable to consult an attorney. It is also crucial to keep and maintain documentation from the trademark search.