Trademark clients often ask why they cannot cut costs by avoiding a comprehensive trademark clearance search before applying for trademark registration. The simple reason is that unregistered marks will not be discovered simply by searching the USPTO’s database, the Trademark Electronic Search System (TESS). Trademark rights can be obtained through registration or use. Common law marks do not enjoy as many protections as registered marks, but they can still cause problems.
Performing a comprehensive trademark search before registration helps ensure that your business’ mark will not result in a likelihood of confusion in the marketplace if your mark is registered. It will increase the chances of successfully registering the mark and help your business avoid time-consuming and costly litigation from a third party claiming senior rights in the same or similar mark. When framing the search, it is essential to consider the Sleekcraft factors courts use to determine whether a mark will likely cause confusion in the marketplace.
Below is a list of places that should be checked at a minimum when performing a comprehensive trademark search. Remember that TESS and the state trademark databases do not capture unregistered mark (or common law) usage.
1. TESS.
2. The Internet.
3. State Trademark Databases.
4. Doman Name Registries.
5. Business Name Registries.
6. Industry Publications.
7. Yellow Pages/Online Business Directories.
8. Social Media.
Where the search is conducted is essential, but how the search is conducted is also critical. A comprehensive trademark search should consider at least the following factors when framing the search terms.
1. Phonetically similar marks (i.e., marks that sound alike but have different spellings).
2. Foreign language equivalents.
3. Marks that may look or sound different but have the same overall commercial expression (i.e., they mean the same thing).
4. Variations in prefixes and suffixes. (Nat’l, National, etc.)
5. Plural variation, including irregular use of the plural
6. Homonyms (for example, site, sight, and cite).
If you are considering seeking trademark registration or would like to learn more about comprehensive searches, click the button below to schedule a free consultation with Melissa Youngman Law.
Melissa Youngman Law provides legal services to businesses throughout Central Florida, and trademark registration services nationwide.