So you want to create brand identity for your company and products but you don’t have the resources to hire an intellectual property attorney. We understand that this can be an expensive undertaking, but doing nothing is a big risk. Before you start developing your website, printing up brochures, running ads, and developing a reputation, there are steps you can take to identify any obvious problems or concerns with the name you have chosen – and they are free.
It is important to know that you may be held liable for trademark infringement if you use a mark that another entity is using, even if it has not registered the mark. A thorough search will not only help you better determine if your trademark is unique and is not in use by any other entity, but also that you will not be sued for trademark infringement.
1. Do a Google® search
Some trademarks may not be federally registered, but they are nonetheless trademarks and are afforded common law rights. It is always best to register a trademark, but registration is not required in order to have legal rights over a trademark. Your results do not necessarily mean you will not be able to use and register your mark, but it will give you a starting point to determine whether the mark you have chosen is already in use or a generic term for the industry. Explore any sites that look concerning.
- Start by typing in the word, words or phrase you want to use and see what comes up. Does the search identify others using the same mark, especially in the same industry? Does it reveal popular uses of the mark in the industry – e.g., weed, MJ, MMJ, cannabis, joint, etc., that would make your mark generic or weak to defend?
- Experiment with many different operators. Changing the placement of one can completely alter your search results. Try as many possibilities as you can. Consult Google Help to learn more about its search operators.
- Search alternative forms or spellings.
- Combine your mark with terms of the industry and/or your goods and services.
2. Search the United States Patent & Trademark Office
Yes, thanks to the internet, you can do this for free. You can conduct your own search online using TESS – the Trademark Electronic Search System.
- Go to http://www.uspto.gov
- Click on “Trademarks” tab
- Click on “TESS”
- For beginners, we recommend using “Basic Word Mark Search (New User).“ Once you have mastered this technique, you can move on to “Word and/or Design Mark Search (Structured)” which gives you more options such as searching two different terms in two separate fields.
Enter the obvious first. Type in the word, words or phrase you want and hit “Submit Query.” Sometimes you will get a direct “knockout.” Click on the name to see who owns it, what goods/services are covered, etc. It is possible for identical or similar marks to exist. The standard for both infringement and registration is “likelihood of confusion.”
If no identical marks were found using the default mode, then expand your search. Try all 3 options under “Result Must Contain.” We warn you that depending on your mark, the “Any Search Terms (OR)” option can give you thousands and thousands of hits. Click “Next List” at the top or bottom of the page to review as many as you can. Again, click on the name if you want to see more detail.
Search obvious misspellings and variations. It takes practice to perfect your method, but remember it is free. Just don’t take too much time between search activity or the site will log you out and you will need to start over again.
- If your mark contains multiple words, search for the entire phrase with and without spaces.
- Look for common language tricks — substituting a “C or Z for an S” or a “K for a Q” or an “X for a CS or KS” or abbreviations such as “EZ for easy” or “R for are or our” or using 4 for “for” or 2 for “to” and on and on. Just because it is spelled differently doesn’t mean it isn’t a problem.
- Search the full word if you use only a portion or vice versa.
- Change the order of the words.
You can also search by owner to see what your competitors have filed. Change the “Field” option to “Owner Name and Address.” If you are not sure of the official company name or which entity filed, simply search a mark you know exists and identify the owner. Be sure to check the “ASSIGNStatus” at the top to see if the filing has been assigned. Don’t use punctuation such as commas and periods. Hyphens are necessary as they are treated as a character. This option works best most of the time with “The Exact Search Phrase.”
3. Check if your mark is registered as a domain name
This can be done at services such as ICANN WHOIS or Whois.net. If you locate an exact or similar domain, explore it. Is it an active site? Could the domain owner’s products and services be confused with yours? Or, is it essentially inactive – just a site with a bunch of ads. In such case, chances are good you won’t have any trademark issues with the domain name owner.
You are cautioned that your informal search is not a comprehensive trademark search and should not be used solely to determine a mark’s availability. The best way to do this is to work with a skilled legal professional familiar with trademark laws prior to adopting, using or attempting to register your mark. Even though the search process may seem easy, it is more difficult than it appears. It takes special talent to interpret the results correctly.
The results of a trademark search have nuances and legal issues that an average business person may not understand. Don’t feel bad if a professional finds something you missed. It does take years of experience to master the art. However, your own informal search will help you identify any immediate potential for problems before proceeding further. There is no point in paying a legal professional to perform a trademark search or file a trademark application if the mark you have chosen is already taken and you could have found it with minimal effort. If you have identified an identical mark in another industry or a number of similar businesses using similar marks but don’t want to change it, with the help of a legal professional, you’ll find yourself in a far better position to move forward .
Don’t be surprised if your first or second choice is already taken. Keep trying. A little investment in your time now though can save you a lot of time, money and headaches later on.