Selecting a trademark or service mark is a business decision. When you launch a new product, the biggest mistake you can make is to fall in love with a name for it that you can’t have.
Especially in these times of global commerce, amid the accelerating proliferation of consumer brands, a useability and registrability search on the trademark or service mark you intend to use is among the most important investments you can make — before you invest time and money into developing product identity and name recognition. A properly conducted search can determine to a reasonable degree of certainty whether there may be either legal or practical restrictions on your free and effective use of the mark you would like to use. To have labels printed, to have packaging fabricated, to have promotional materials distributed, to have advertising run, to bring a product to market before making a thorough search for similar product identifiers that already may be in use is to put your investment at risk unnecessarily.
A comprehensive trademark search looks beyond the issue of whether a trademark or service mark may be registered in the U.S. Trademark Office. It seeks to determine whether the mark can be used in the marketplace without confusion or interference. Such a search includes, in addition to records of current U.S. registrations and pending U.S. applications, investigation of U.S. state registrations and applications; of international registrations and applications, if appropriate; of historical data pertaining to cancelled U.S. registrations and abandoned U.S. applications; of unregistered marks, brands, trade names, business names, and assumed names; of uses in advertising; of Internet domains and uses on the World Wide Web. A professionally conducted search is an investment, of course, but so is insurance. Prudence demands both, so that your investments and efforts will be adequately protected.
However, both misunderstanding and misdirected concern about economy still lead otherwise astute business people to skip the trademark search, claiming:>/p>
“It’s Optional.”
That’s right. Nothing — except, perhaps, good sense — mandates a thorough trademark search. In applying for registration of a trademark or service mark, you sign a declaration under oath that you believe you have the exclusive right to use the mark, and you could make such a declaration in honest ignorance on the sole basis of “I’ve never seen or heard of this.” The Trademark Office, lacking immediate evidence to the contrary in its own files, will take your word for it. However, when you enter the marketplace with a new product, you have an unavoidable duty to make yourself aware of the market. And that leads to the hard fact that, even if you obtained a registration of your trademark or service mark in self-imposed ignorance of the use of similar marks by others, ignorance will not defend you from having to abandon your mark and your investment in it at the demand of a senior user of a confusingly similar, unregistered mark. There are important and valuable benefits to trademark registration, but as noted elsewhere in these pages, trademark rights do not follow from registration. Trademark rights accrue from use of a mark in the marketplace.
“The trademark office conducts a search.”
Yes, it does. The Trademark Office examining attorney conducts a search, though only of the Office’s own database of active registrations and pending applications. If favorable, this search indicates that your trademark or service mark may be registrable. However, the Trademark Office does not look at historical data, trademark or trade name registration data in state and international registries, or any data relating to so-called “common law” trademarks — for example, unregistered consumer brand names — that may affect your ability to actually use your mark in the marketplace. The Office determines only whether your application may be lawfully registered. Conflicts and disputes that may arise from your use of the mark are left to the courts.
“It’s too expensive.”
Hardly. A search good enough to tell you what you need to know — not only that you will be able to register your trademark or service mark, but, moreover, that there’s a good chance that you will be able to use it without running into trouble — costs a few hundred dollars. As a component of your investment into brand recognition and product identification, its a small expense.
“I Can Do it Myself.”
That may be true. If you can use the Web browser and put the time into it and look in the right places using the right criteria, you could do a reasonably good search on your own. It’s also true that, given time and opportunity, you would be able to drive a train or develop a respectable golf game. The information you want is scattered about the Internet and among various on-line services, and finding it is a challenge. Some of the information is free, particularly more and more government data, but much of the free information is either out of date to some greater or lesser degree, or poorly organized, or both. Although some excellent proprietary databases are available on-line for one-time use, these tend to be expensive to use on that basis, especially if you don’t know how the database works and have to learn as you use it. It’s also easy to get the impression that a general search of the Web will tell you if the mark you’re considering is in use, but that would not be true. The Web should not be overlooked, but even if Web search engines and indexes were perfect, which they aren’t, only a fraction of U.S. businesses and brands are on the Web, presently. Finally, you need to ask yourself: Do I know what I’m looking for? Will I know what all the search data I may collect mean? While conducting your own search is possible, it’s not recommended unless you know what you’re doing or have a great deal of time to spend and the will to spend it.
What You Can Do On Your Own:
However, you can easily narrow your list of trademark or service mark choices by eliminating those that are definitely not worth pursuing:
- With access to the Trademark Office’s Web database or to a local Patent and Trademark Depository Library, you can look up records of active applications and of registrations of marks that would obviously bar registration of your mark. Keep in mind, however, that these records can be as much as six months out of date.
- You know your business. Although you may never have read the trade journals related to your business with an eye to trademarks, brands, and trade names, you can review these publications to look for similar names that may interfere with your use of a mark you may be considering.
- The Web and on-line services have many customizable news products, including searchable archives, that you can search for evidence of prior and current use of names similar to marks you are considering.
- In addition to a general search of the World Wide Web, a particular search of domain registrations similar to marks you are considering is almost essential these days. With the growth of e-commerce, a domain (Web address) related to brand name identity is important enough, in some businesses, to remove a particular mark from consideration because the dot-com domain is not available. (Acquiring trademark rights, including trademark registration, after a related domain is registered affords you no rights in the domain.)
When you begin a new business, or launch a new product, it makes good sense to start with a long list of desirable trademarks or service marks that can represent to consumers your product’s unique identity, and then narrow the choices to a short list of possible marks. Even if you’ve been in business for some time locally, and you are about to expand by opening locations or penetrating markets in other states, or by entering the global marketplace through e-commerce, you can’t count on being able to use your local trade name or product name as a national or international trademark or service mark. When establishing product identification on a national or international level, it isn’t enough to simply obtain a trademark registration. As part of a sound marketing strategy, it is essential to register a trademark or service mark that will clearly distinguish your product from other products without creating consumer confusion or actionable conflict with other brands.
