The following is an edited transcript of my book video Building a Bold Brand Chapter 5: Searching for Conflicts.
After brainstorming name ideas and developing a solid list of possibilities, the second major step on the way to trademark protection is to do some preliminary searching to see if there are any obvious conflicts in use that could present an infringement or a registration issue. A preliminary search may easily turn up results of competitors already using a similar name for a similar product or service, and it may even inform you if there’s a pending application or registration that could block your application. Generally speaking, you can probably eliminate some names based on your own preliminary search. It is also recommended that after you conduct your own initial search that you consult an attorney for a more comprehensive clearance search and analysis.
Without performing a full clearance search, it is impossible to know for certain whether another company is already using the same name or a confusingly similar one in the marketplace. While you can never be one hundred percent certain, you can minimize the risks as much as possible.
Only an attorney can really assess whether another name or use is confusingly similar or presents a trademark protection problem. Searching for logos presents additional challenges. It’s a common misperception that if the USPTO site is searched via their search engine TESS, and no one else has registered a conflicting name with the USPTO, that name is safe to use.
Another brand name could still have superior rights based solely on their use of the name even if they never applied to register the trademark at the USPTO. This is called Common Law Rights. A search of the USPTO is valuable, but by itself it does not provide a full picture of the potential risks surrounding a name.
There are a variety of types of trademark searches. Almost always a comprehensive search and analysis from an experienced trademark attorney is advisable to determine whether a new brand name is available before investing in it, using it, and protecting it.
Part of any comprehensive search includes but is not limited to:
- USPTO records
- domain names
- state records
- business databases
- online search engines
- alternative spellings, spacings, and other variations of the possible name
Once all of the data from a comprehensive search is obtained, an analysis of the potential conflicts must be undertaken. Such an analysis is not simple and depends on the strength of the relative terms, the amount of overlap, the potential dilution of the marks at issue, variations in goods and services, and more. That’s why it’s important that an experienced trademark attorney help you conduct and analyze the search.
There are some great free sites where you can get started on doing some searching:
- window1.com allows you to type a search one time, but perform it in variety of different search engines at the same time
- Amazon, of course, just because of their size
- Hoovers is a great business database that’s been around for many years.
- CIPO is the Canadian Trademark Office
These tools are a helpful start. Consulting an experienced attorney for more information about a clearance search and a thorough analysis of the search findings is highly recommended.
Six steps to a branded protected name:
- Brainstorm for brand names
- Narrow the list to several possibilities that you like
- Consult with a trademark attorney to see if your preferred names have potential
- Choose one or two favorite names.
- Check domain names
- If available, acquire that domain name and file trademark application as quickly as possible with the USPTO based on your intent to use the trademark in commerce
For more, see my video Key Trademark Search Terms
