Should I Perform a Trademark Search?
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Why Should I Perform a Trademark Search Before Registering a Trademark?
Trademark law is an area of intellectual property law. It concerns the ability to secure intellectual property rights in the symbols that represent the company. A “symbol” for purposes of trademark might include words, images, drawings, phrases, tunes, shapes, general appearance of the business (known as trade dress), or even colors.
Registering a trademark is generally done by filing an application with the United States Patent and Trademark Office (USPTO). Part of this process concerns doing a trademark search.
In this article, we describe the process for filing a trademark. Then we describe the reasons for performing a trademark search prior to registering a trademark with the USPTO.
What is Required to Federally Register a Trademark?
When a business files for trademark protection, the USPTO will examine various elements of the trademark. The first element is that the company must use the claimed trademark or symbol to publicly to represent the company or its products or services.
Next, for an expression to be subject to trademark protection, it must be “distinctive.” Distinctiveness means that the public readily is able to identify the symbol with a particular company, product, or service. That is, there is no risk of public confusion about what the symbol represents.
The symbol must meet an acceptable category for distinctiveness. The categories of distinctiveness are as follows:
• Fanciful - The symbol was made up and has no other meaning, significance, or business association outside of the company using it.
• Arbitrary - This when a company uses the symbol in a way that is considerably different from its general understanding. Using the symbol to represent the company, product, or service is so arbitrary that individuals easily associate the expression with the company.
• Suggestive - A suggestive mark in some way suggests the company, product, or service.
• Descriptive - A descriptive company name in some way describes what the company, product, or service is or does. To register a descriptive symbol, the company must demonstrate that the company has achieved “secondary meaning” beyond the descriptive nature of the word. This means that the general public would recognize the specific company, product, or service when the claimed descriptive mark is spoken, written, or shown.
• Generic - A generic symbol is not capable of protection. A symbol is generic when it is commonly associated with a class of product, service, or business — rather than representing the specific business.
If the mark can demonstrate distrinctiveness, the next step is to make certain the mark is not already in use. The USPTO will determine whether the mark is being used by a business in any manner that may cause customer confusion. If so, this will destroy the ability to acquire federal trademark protections.
The alternative method for securing trademark protections is under state common or statutory law. Each state will recognize trademark rights for a mark used by a business in that state. Some states require registration pursuant to state statute. If so, the business will be required to meet the use and distinctiveness requirements of the state. Most states, however, provide common law protection without the requirement of registration. Basically, the first business to use a symbol capable of trademark protection to represent the business will receive automatic protection. This locks out later businesses (either new businesses or out-of-state businesses entering the state) from using a confusingly similar mark.
Note, securing state trademark rights would effectively destroy the ability of another business to secure federal trademark rights — as the symbol is already in use. This brings up the point that being the first to secure federal trademark protection through registration effectively establishes priority for trademark use in all states.
Why Conduct a Trademark Search Prior to Seeking Federal Registration?
In short, it will save you time and money. Also, it could provide you options in securing the trademark rights.
First, begin by doing a thorough search of the USPTO trademark database. This will allow you to do a word and image search for symbols that were previously filed with the office. If the trademark was previously filed and is still active, then there is no option for registering that exact mark. If, however, a previously-trademarked image has expired — there may be an opportunity to apply to register the mark for your business.
Next, you will need to do a common database search through online search engines, such as Google or Bing. The reason for such a search is to determine if your mark is being used to represent a business anywhere in the US. Generally, if the mark is very similar and represents a similar type of business, then the present use of the mark would likely interfere with federal registration. Knowing about such a use will allow you to make a case to the USPTO that your mark is sufficiently distinctive from this other mark to allow for federal registration. Remember, the standard is whether using the symbol will create some sort of customer confusion.
Lastly, you need to know if you are infringing upon the trademark of others. It would be truly disappointing to start your business operations using the symbol to represent your business, product, or services, only to find out that the mark is claimed by another business. This could lead to a trademark dispute under state or federal law between you and the other business. It can be very expensive to either defend your trademark use or to rebrand your business product, or service with a symbol that does not infringe upon another’s trademark rights.