The following is an updated edited transcript based on Chapter 5 of my book, Building a Bold Brand: The Foundations of Trademark Protection. You can also watch the full video below.
Before investing in a new business name, product name, service name, slogan, or other brand, one of the most important steps is to search for potential trademark conflicts.
A trademark search can help answer two critical questions:
- Could another trademark prevent you from obtaining a federal registration?
- Could someone else already have trademark rights that create a risk in using the name?
Those are not always the same question.
That is why a good trademark search should go beyond typing the exact name into the USPTO database.
Why Should You Search a Trademark Before Filing?
After brainstorming possible brand names, I recommend narrowing the list and conducting preliminary searches before becoming too invested in any one option.
A search may identify:
- An existing federal trademark registration
- An earlier pending trademark application
- A competitor already using a similar name
- An unregistered business with earlier trademark rights
- Similar names with different spellings
- Related goods or services that could create a conflict
Finding these issues early can save significant time and expense.
It is generally much easier to choose another name before launching a brand than to discover a serious trademark problem after investing in websites, packaging, signage, marketing, social media, and customer recognition.
Is Searching the USPTO Trademark Database Enough?
No.
Searching the USPTO’s federal trademark database is an essential part of a trademark search, but it does not provide the complete picture.
The USPTO database contains federal trademark applications and registrations. It does not contain every trademark being used in the United States.
Someone may have trademark rights based on use of a name in commerce even if they never obtained a federal registration. These are commonly called common-law trademark rights.
Depending on the circumstances, earlier common-law use can create significant issues for another business that later begins using or seeks to register a similar trademark.
That is why a search of federal USPTO records alone is not a comprehensive trademark clearance search.
What Is a Comprehensive Trademark Search?
A comprehensive trademark clearance search examines multiple sources for trademarks and uses that could present potential conflicts.
The search may include:
- USPTO federal trademark applications and registrations
- Internet search results
- State trademark records
- State business records
- Domain name records
- Business databases
- Industry-specific sources
- International trademark databases when relevant
- Similar spellings and variations of the proposed trademark
- Similar-sounding terms
- Spacing and punctuation variations
- Related goods and services
The goal is not simply to determine whether the exact same name appears somewhere.
The important question is whether another trademark may be sufficiently similar, when considered together with the relevant goods or services, to create a potential legal conflict.
How Do You Search the USPTO Trademark Database?
The USPTO now provides its Trademark Search system for searching federal trademark applications and registrations.
The older Trademark Electronic Search System, commonly known as TESS, was retired in November 2023.
When searching the current USPTO database, do not search only for an identical match.
A useful federal search may need to consider trademarks that are similar in:
- Appearance
- Sound
- Meaning
- Commercial impression
For example, changing the spelling of a word may not eliminate a potential conflict if consumers would still pronounce both trademarks the same way.
Similarly, do not assume that trademarks must cover identical goods or services to conflict.
Goods or services can be considered related even when they appear in different international classes.
Search More Than One Version of the Name
A strong trademark search requires thinking beyond the exact spelling you plan to use.
For example, if the proposed trademark were FREE RIDE, searches might need to consider variations such as:
- FREE RIDE
- FREERIDE
- FREE RIDES
- FREE RYDE
- PHREE RIDE
- RIDE FREE
- FREE-RIDE
Depending on the trademark, additional searches could involve phonetic equivalents, plural forms, abbreviations, misspellings, translations, shared dominant terms, or similar meanings.
One search rarely tells the whole story.
What Are Common-Law Trademark Rights?
Federal registration is extremely valuable, but trademark rights can also arise from using a trademark in commerce.
These unregistered rights are generally referred to as common-law rights.
This means a business could potentially create a conflict even though its trademark never appears in the USPTO’s federal database.
That is why internet and marketplace searching is so important.
A search should look for actual businesses using the same or similar branding in connection with related products or services.
Depending on the circumstances, this might include:
- Business websites
- Search engine results
- Social media
- Online marketplaces
- Industry directories
- State business records
- Local businesses
- Apps
- Publications and news coverage
Finding an unregistered use does not automatically mean a trademark is unavailable. It means the use should be investigated and analyzed.
What Is Likelihood of Confusion?
One of the most common reasons the USPTO refuses a trademark application is likelihood of confusion under Section 2(d) of the Trademark Act.
The analysis does not ask merely whether two trademarks are identical.
The USPTO considers whether the trademarks are sufficiently similar and whether their respective goods or services are related such that consumers could mistakenly believe they come from the same source.
Two trademarks can potentially be confusingly similar because of similarities in their appearance, sound, meaning, or overall commercial impression.
That is one reason trademark search analysis can become much more complicated than simply locating search results.
Finding Search Results Is Only Half the Job
A trademark search produces information.
The next step is determining what that information means.
A proper clearance analysis may need to consider:
- How similar the trademarks are
- Which portions of the marks are distinctive or weak
- The meaning and commercial impression of each mark
- How closely related the goods or services are
- Whether consumers are likely to encounter both
- When each party began using its trademark
- Whether registrations or applications are live
- The significance of third-party use of similar terms
- The geographic scope of possible common-law rights
This analysis can be nuanced.
For that reason, an experienced trademark attorney can be especially valuable not merely in finding potential conflicts, but in evaluating their legal significance and helping a business understand the level of risk.
Can I Do a Preliminary Trademark Search Myself?
Yes.
A business owner can perform useful preliminary searching before deciding which names deserve a more comprehensive review.
A preliminary search can help eliminate obvious conflicts and avoid spending resources on names that appear particularly problematic.
Useful starting points include:
USPTO Trademark Search System
Search pending federal trademark applications and federal registrations.
Internet Search Engines
Search the exact name and relevant variations together with terms describing the proposed products, services, or industry.
State Trademark and Business Records
Search for businesses and state-level trademark registrations using the same or similar names.
Domain Name Searches
Look for corresponding domains and investigate how similar domains are actually being used.
WIPO Global Brand Database
For businesses with international concerns, the World Intellectual Property Organization provides a database covering trademark records from multiple national and international sources.
TMview and Foreign Trademark Office Databases
Businesses planning international expansion may also need to review appropriate foreign databases, such as TMview or the Canadian Intellectual Property Office trademark database.
These resources are starting points. The relevant scope of a search depends on the business, proposed trademark, goods or services, and geographic plans.
What About Searching Logos?
Searching logos can be even more challenging than searching words.
Logo searches may require evaluating:
- Design elements
- Shapes
- Images
- Stylization
- Overall visual impression
The USPTO’s Trademark Search system now includes tools for searching design elements, and the USPTO has also been testing image-based search functionality.
But just as with word marks, finding similar designs is only the first step. Their legal significance must still be analyzed in connection with the relevant goods and services.
Six Steps to Choosing and Protecting a New Brand Name
Here is the process I generally recommend for developing a new trademark:
1. Brainstorm several possible brand names
Do not become attached to only one option too early.
2. Narrow the list to your strongest possibilities
Consider both branding strength and potential trademark strength.
3. Conduct preliminary trademark searches
Look for obvious conflicts in federal records, online, and in the marketplace.
4. Conduct a comprehensive clearance search and analysis
For an important new brand, consider having experienced trademark counsel conduct or analyze a comprehensive search before making a significant investment in the name.
5. Check domain names and related brand assets
Review relevant domains and other important online identifiers.
6. File the trademark application promptly when appropriate
If the search and analysis support moving forward, consider filing a federal trademark application promptly.
A business that has not yet launched the brand may, in appropriate circumstances, be able to file based on a bona fide intent to use the trademark in commerce.
Frequently Asked Questions About Trademark Searches
How do I check whether a trademark name is available?
Start by searching the USPTO Trademark Search system, but do not stop there. A comprehensive search may also include internet results, common-law uses, state records, business databases, domain names, and variations of the proposed name.
Can I trademark a name if no one has registered it with the USPTO?
Possibly, but the absence of an identical federal registration does not necessarily mean the name is available. Someone may have an earlier pending application, a similar registered trademark, or common-law rights based on earlier use.
Do trademarks have to be identical to conflict?
No. Trademarks may potentially create a likelihood of confusion even if their spelling or appearance differs. Similarities in sound, appearance, meaning, or commercial impression can matter.
Do competing trademarks have to be in the same trademark class?
No. Goods and services can be considered related even when they are classified in different international classes. Focusing only on the same class can cause a searcher to miss potentially important results.
What is the difference between a preliminary trademark search and a comprehensive trademark search?
A preliminary search is usually designed to identify obvious conflicts and narrow a list of possible names. A comprehensive clearance search goes much deeper and searches multiple federal, state, common-law, online, and other sources, followed by analysis of the potential conflicts.
Can a trademark attorney guarantee that a name is available?
No trademark search can eliminate every possible risk or guarantee that a trademark will register or never face a dispute. A thorough search and legal analysis can, however, provide much more information for evaluating and reducing potential risk.
Search Before You Invest in a Brand
A strong trademark begins with a strong name, but even a great name can create major problems if someone else already has conflicting rights.
Search early.
Search broadly.
And do not confuse finding no exact match in the USPTO database with receiving an all-clear.
The purpose of a trademark clearance search is to learn as much as reasonably possible before investing heavily in the name.
For more information, watch my video, Key Trademark Search Terms, or learn more about our trademark search services.
This article provides general educational information and is not legal advice. Trademark availability and likelihood of confusion depend on the particular facts and circumstances.
