A trademark search is a search performed before you file a trademark registration application that looks for marks which are similar to the mark you seek to register.
A trademark search is almost always a recommended step, but it is not required.
When you file a trademark application, one of the first things the United States Patent and Trademark Office will do with it is compare the mark you’re hoping to register against other marks already registered. Section 2(d) of the Lanham Act forbids the registration of any mark “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive….” This is the most likely reason an application will be refused registration – because it is too similar to a mark already registered. The USPTO compares many factors when determining whether two marks are similar: the look, sound, and meaning of the marks are important, as well as the goods or services with which the marks are used. There are a number of other factors the Office looks at as well.
The USPTO always performs a search for similar marks. It will always make a refusal if a similar mark is found. A trademark registration applicant can thus likely improve his or her changes by performing their own search before the mark is filed. A trademark search and analysis will attempt to predict whether the USPTO will make a refusal. If a refusal is an almost certainty, the applicant can save money and decide to not file an application. Or, an applicant can decide to change their trademark in a way that would avoid confusion. Of course, the search may also indicate that there are no registered marks that would block registration of the applicant’s trademark.
A trademark search is therefore a valuable way to predict how the application will fare at the USPTO and to take early, cost-effective ameliorative action if needed.
A trademark search has other merit, as well, especially for growing companies. A trademark search can scour the internet, state business databases, journals, and other repositories to determine whether there has been use of the trademark. This search looks not just at whether there are similar marks registered at the USPTO, but also at whether similar marks are being used around the US. Because trademark rights are based on use, knowing whether and where a similar mark has been used provides the trademark owner with valuable information about how its trademark can expand. In other words, if a mark similar to yours was used in Florida before you, it is possible that you cannot expand your company’s use of the mark into Florida.
There are some circumstances in which a trademark search is not recommended or needed, however. Tom Galvani can help you decide whether you need a trademark search, and, if you need one, he performs the search and analysis for a flat fee. You can contact him at 602-281-6481 to ask him questions or set up a free initial consultation.