You want to conduct a US trademark search in order to determine the availability of a particular trademark for your exclusive use and registration with the United States Patent and Trademark Office (USPTO). A US trademark search also helps to minimize the chances of being successfully sued for trademark infringement by someone who owns rights in an identical or confusingly similar trademark. In turn, it reduces the risk of losing the goodwill and public recognition associated with your valuable trademarks, not to mention the significant amount of money and time you put into creating and publicizing your trademarks and building your brand awareness.
There are three types of US trademark searches:
- Common Law Trademark Search
- State Trademark Search
- Federal Trademark Search (this is the search most of my clients want)
Search #1 – Common Law Trademark Search
The first type of US trademark search is the common law trademark search. A common law trademark search will reveal trademarks that are currently in use in the United States but were never registered by their owners on a federal or state level. Although a common law search cannot tell you whether your trademark is eligible for registration with the USPTO, it’s still relevant because trademark rights in this country are acquired by simply using the trademark in commerce in connection with the advertising and sale of products or services. There’s no legal requirement that trademark owners register their marks with the USPTO or with any state agency.
The common law search is the most difficult and expensive search for a trademark attorney to conduct. If you don’t have the resources to hire a trademark attorney to perform a common law search, you can at least do a cursory one yourself using Google, Bing, and some of the free online business directories. There’s also a number of non-attorney search services that can perform a common law search, but they’re not cheap and they don’t come with a legal opinion as to whether your mark is in conflict with any of the marks uncovered by the search.
Bottom Line: Although a full-blown common law trademark search can certainly provide you with a wealth of information, in my opinion, it’s overkill for most entrepreneurs, businesses, and organizations, especially considering its substantial cost.
Search #2 – State Trademark Search
The second type of US trademark search is the state trademark search. A state trademark search will reveal trademarks that are registered in a particular state. As with the common law search, a state trademark search cannot tell you whether your trademark is eligible for registration with the USPTO.
All fifty states allow trademark owners to register their trademarks with the Secretary of State’s office (or other state agency), which results in the owner being granted statewide rights in their marks. However, most states don’t perform a substantive and in-depth review of trademark applications. So long as the applicant fills in all the blanks and pays the proper filing fees, the state trademark registration will be granted regardless of whether there are any conflicting state trademarks already registered. Moreover, state officials don’t perform a federal trademark search (discussed below) prior to issuing a state trademark registration. Any state registration issued after someone already obtained a federal trademark registration for a confusingly similar mark would be essentially worthless. Furthermore, many state trademark registries are not yet available online for general public searching, and it’s not unusual for the ones that are to be woefully out-of-date and incomplete. Finally, most people don’t register trademarks at the state level anymore because it has become so easy and common to engage in commerce in more than one state (and throughout the nation) with the advent of the Internet and other nationwide advertising options.
Bottom Line: In my opinion, state trademark searches are almost always unnecessary and a complete waste of time and money.
Search #3 – Federal Trademark Search
The third type of US trademark search is the federal trademark search. This is a search of the USPTO’s records and database. It will reveal the following:
- Live trademark applications
- Live trademark registrations
- Abandoned trademark applications
- Canceled trademark registrations
To put it another way, a federal trademark search will uncover registered trademarks, dead trademarks, and trademarks that are pending registration but are not yet registered.
This is the most important type of US trademark search and is recommended for all entrepreneurs, businesses, and organizations. There are actually two types of federal trademark searches: (1) the “knockout” federal trademark search, and (2) the comprehensive federal trademark search.
“Knockout” Federal Trademark Search
The “knockout” federal trademark search is something you can (and should) do yourself using the Trademark Electronic Search System (TESS) available on the USPTO website. It’s completely free-of-charge and is intended to uncover marks that are substantially identical to your mark and that could be in conflict. Although the TESS search is fairly basic, it’s by far the best place to begin your trademark research.
However, I want you to understand that this “knockout” federal trademark search won’t tell you whether your trademark is eligible for use and registration, or whether your trademark application will be approved after it’s reviewed by an examining attorney at the USPTO. For more information about why you cannot solely rely on the results of this rudimentary search (or any other free trademark search you might find online), I strongly recommend you read my article about the TESS free trademark check.
Comprehensive Federal Trademark Search
If the “knockout” search using TESS didn’t uncover any obvious conflicts, the next step is to invest in a comprehensive federal trademark search. This is the type of US trademark search that I typically conduct for my clients because it provides the most guidance regarding trademark availability and registration eligibility for the least amount of money. It truly is the most bang for your buck.
In a perfect world, everyone would perform a comprehensive federal trademark search before using a particular trademark in commerce. First, it would drastically reduce the number of trademark infringement lawsuits filed throughout the United States every year (most of which are brought against small and start-up businesses and organizations). And second, it would help people avoid the devastating and costly effects of losing an infringement lawsuit and having to change their trademark (which means having to change their websites, marketing materials, advertisements, social media, signage, vehicle wraps, and/or product packaging).
But, the reality is that there are thousands of businesses and organizations throughout the nation that have been using their trademarks for many years (or even decades) that never conducted a US trademark search of any kind, much less a comprehensive federal trademark search. Some of these businesses and organizations have grown to be quite substantial and have decided for one reason or another that they want to secure the benefits of trademark registration. If your business or organization falls into this category, you wouldn’t perform a comprehensive federal trademark search to clear your mark from a use perspective. You’ve already been using your mark and it’s unlikely you would change your mark even if the search revealed that someone else was using an identical or similar mark before you. Rather, you would perform a comprehensive federal trademark search to clear your mark from a registration perspective, or in other words, to find out whether your mark can be registered with the USPTO. Simply put, a comprehensive federal trademark search would indicate whether filing a trademark application would be a waste of money or not.
How Do I Perform a Comprehensive Federal Trademark Search?
A comprehensive federal trademark search is generally performed by a trademark attorney who uses specialized software (not TESS) to sift through the USPTO records in order to determine whether your trademark is likely to cause confusion with any other mark that’s currently registered or pending registration. Your attorney won’t investigate common law marks or state trademark registrations as part of the federal trademark search because the USPTO won’t give them any consideration when determining the eligibility of your mark for registration.
In addition, your trademark attorney will (1) assess the odds of successfully overcoming any potential likelihood of confusion rejection by the USPTO, (2) analyze whether your mark falls into one of the numerous categories of trademarks that are legally ineligible for registration under any circumstances, (3), analyze whether your mark falls into one of the categories of trademarks that are only eligible for registration under certain circumstances, and (4) assess the probability of a third-party filing a trademark opposition against your application once it’s published for opposition.
Once the comprehensive federal trademark search and analysis is completed, your attorney will provide you with a detailed opinion containing the following information:
- Any substantial risks associated with using and applying to register your trademark
- The costs associated with attempting to overcome any anticipated refusals by the USPTO or challenges by a third-party
- The probability of successfully registering your trademark and how long it might take
Based on the search results and your attorney’s opinion, you’ll then decide whether you want to start the US trademark application process, or whether it might be better to come up with a different mark that could potentially be less problematic.
I Can Help With Your US Trademark Search
I’m experienced US trademark attorney Morris Turek. If you have any questions about which type of US trademark search is right for you, or would like to partner with a skilled and knowledgeable trademark attorney who’ll have your comprehensive federal trademark search results in about a week, please contact me for your no-cost consultation. I can be reached at (314) 749-4059, via email at email@example.com, or through my contact form located at the bottom of this page. I look forward to hearing from you soon.