Trademark searches - how you can conduct them

Your business is unique, and you want your business to identify itself as separate from other businesses or services. You do this by registering the unique slogans, phrases, logos, etc. for your business as trademarks. However, before you can register your trademark, you want to check and see if anyone else has a trademark that is similar to the one you want to trademark. If you try to register a trademark that is too close to an existing trademark, your application will not be approved, and the fees you paid to register your trademark will be lost. So, how do you conduct a trademark search?

Ideally you should search all registered and unregistered trademarks, of which there are millions. However, this may not be possible. So, to start your search with the free trademark database on the U.S. Patent and Trademark Office's (USPTO's) website. The USPTO's database consists of all registered marks and all marks for which registration is pending. So visit www.uspto.gov and search your trademark idea there.

The following are a few other places you can search for your trademark, or tools you can use to help in your search for trademarks. Some of these should be used before the actual search in order to better narrow down your search, and some of them are places you can look to conduct the searches:

1. Trademark Acceptable Identification of Goods and Services Manual.

This is available in paper, DVD-ROM or on the USPTO Website. It is a great place to start you search as you can begin with this alphabetical listing of acceptable terms for the identification of goods and services. What you are going to want to do is locate terms that describe your good or service. For example, if you sell a product that can be described in a general way, you want to look for the acceptable terms for that item. Once you find acceptable terms you will want to take note of the international class number listed next to each term. In addition to that you want to take note of things that the product is usually sold with, such as peanut butter is usually sold with jams or jellies. Lastly, check for deleted terms that may be related to your good or service. That way you can make sure that the trademark you choose is not too similar to something in the same genre, or in a related genre.

2. International Schedule of Classes.

This is also available in paper, DVD-ROM or on the Internet. This is a useful tool for finding trademarks in similar areas. For example, you would want to scan the schedule for additional classes that are related to your product or service, so if you had a tax preparation service, you would want to recognize that Class 36 would be related because it includes services related to insurance, financial affairs, monetary affairs and real estate, all of which come into play when you have taxes.

3. Trademark Manual of Examining Procedure (TMEP)

Once again this is available in paper, DVD-ROM or on the USPTO Web. When searching your trademarks this is a very useful tool. You will want to review Chapter 1400 for the appropriate class scope notes in order to confirm the terms and classes you have chosen. For example, if you sell knives, it could fall under hand tools, medical apparatus, or even toys and sporting goods.

4. Design Code Manual

This manual is available in paper or on the USPTO Web. The reason you want to look at this manual is that if your mark incorporates a design or logo you must search for trademarks that might be confusingly similar. This manual has an index that can help you find the appropriate six-digit code for each design element in your mark. For example, if your mark has a specific animal or plant in it, it would be coded with a specific number. Each element is coded, so you can check the specific codes for the elements you have, that way, you do not end up trying to trademark a logo too similar to someone else's.

5. Trademark Electronic Search System (TESS)

You can search this system on DVD-ROM or on the USPTO Web. In order to make the most of this system you will want to take the information you gathered in the earlier suggestions, and use it to search for trademarks within this system. One of the things you will want to remember is that there are purposely misspellings, and phonetic changes to words, so search those as well.

6. TARR Trademark Status Database

This database is only available on the USPTO website. This is where you find out the status of the trademarks, it will tell you if they are pending, existing etc. This is information you will want to consider when looking to trademark your own item.

7. Informal internet search.

You can simply type your proposed trademark into a search engine and see if there are any domain names close to it. You can also look for unregistered trademarks with the Thomas Register website or at the Network Solutions website. Taking a few hours to browse the internet for similar companies, services, and products to yours, and similar items, can help you to find out really quickly if your trademark is too similar to someone in the same genre. So, take the time to do a quick search, it could save you a lot of headache in the long run.

8. Visit the PTDL, which is the Patent and Trademark Depository Library.

They have some great research materials that make searching, and conducting a search for your trademark much easier. However, sometimes the PTDL office is not close by, even if there is one in every state. Whenever possible take the time to visit this library, as it can be a huge asset in searching in a thorough enough fashion.

9. Use a professional search service.

One of the easiest ways to conduct a trademark search is by hiring a professional firm to do it for you. You can order a complete search of registered and unregistered marks through any number of companies, however, some of the best for the most reasonable fees include: Trademark Express, Thomson and Thomson, CCH Trademark Research Corporation or one of the PTDLs that offer electronic search services. If you have hired an attorney to help you with your trademark application they will usually conduct a trademark search as a part of their services. If they do not, you should request one. They are trained on how to do this and can conduct one much faster, and with more completeness then you can.

So, now that you know what you should be doing to conduct a trademark search, and how to go about it the right way, it is important to understand why you should be conducting one. The fact is that it is not required to conduct a trademark search.

The first reason you should conduct a trademark search is that you need to determine whether another business is already using a trademark that's identical or similar to the one you want to use to ensure that you won't violate someone else's trademark rights. Even if you do it unintentionally, if you use a trademark too similar you are violating their rights. It can take a few months for you to hear back from the trademark office, and during that time you do not want to get into legal trouble. The fact is, if you violate someone's trademark rights, you will be sued, at the least to stop using the trademark, but you could have to pay damages, and have the expense of changing your advertising, website, letterhead, etc.

The second reason you want to conduct a trademark search is that registering a trademark is not free, and trying to register a trademark that is too similar means your trademark application will be denied. The government will not refund your application fees. This can be very costly.

Conducting a trademark search is not as difficult as it may seem, and if you do not have the time, or do not want to bother with the hassle you can still protect yourself, and find out if you have a confusingly similar trademark by hiring a professionally search company to do the search for you. Sometimes it is best to just hire a trademark attorney and let them handle the whole thing, but if you want to save money it is possible to do it yourself. One of the things you want to start with is simply a preliminary internet browse. It can be easier than you think. For example, if you are trying to register a trademark for a toy company, you can go to a major toy store website and check out the biggest brands they offer. Look at their trademarks, and decide if yours is too similar to any you see.