Before selecting a name for your business or product line, you should consider conducting a thorough trademark search. A properly conducted trademark search can reduce the likelihood of costly trademark infringement lawsuits, ensure that marketing dollars spent on a product or service name are not wasted due to later learning that the name needs to be changed, and reduce the legal fees involved in the trademark application process.
While we strongly encourage our clients to hire an experienced attorney to conduct a formal trademark search, we also encourage clients to conduct their own preliminary trademark search before paying for a formal search. Formal trademark searches can be expensive and you can avoid an unnecessary formal search if you find during your preliminary search that the name you wished to use is already being used by a competitor. If your preliminary search does not identify any obviously conflicting trademarks, then you should hire an attorney to conduct a formal search to ensure that no other conflicting trademarks exist.
Preliminary Trademark Search - Databases
Potentially conflicting trademarks may be found by searching the following databases: (i) the United States Patent and Trademark Office’s (“USPTO”) trademark database, (ii) state trademark databases, (iii) Google, and (iv) domain name registries.
USPTO Database
Begin by searching the USPTO’s trademark database for the exact name that you wish to use. For purposes of illustration, we will use the example of a clothing company that wishes to use the name “Flora Stitch” for a line of short-sleeved shirts. Searching for the exact name “Flora Stitch” produces no results. Next, search for each of the individual words, “Flora” and “Stitch.” Flora produces 997 results and Stitch produces 1304 results. While this may seem overwhelming, it is probably not necessary to look at each result. For the purposes of a preliminary search, you can limit your search to the class of goods or services for which you intend to use the name Flora Stitch. The list of classes to choose from can be found here. The appropriate class here is Class 25, because Flora Stitch will be used for shirts, and shirts are in Class 25 (clothing, footwear, headgear). To search by class, you will need to use the advanced search functions found under the “Free Form” search tab of USPTO trademark database. The search string “(Stitch)[BI] AND (025)[IC]” will produce trademarks in Class 25 that include the word Stitch. This search still produces 307 results, which is not surprising, given that Stitch is a word with clothing-related connotations. Running the same search for Flora “(Flora)[BI] AND (025)[IC]” produces 76 results.
Now you can look through the results to see if there are any trademarks that are obviously similar to Flora Stitch. For example, if you found a trademark “Stitch Flora,” you might decide that you have found a trademark that is too close to “Flora Stitch” and that you should find a new name for the line of shirts.
State Trademark Databases
In addition to federal trademarks registrations, trademarks may also be registered at the state level. If you plan to offer goods or services in California, you should also search the California trademark database, located here. Select “Description of Mark” and search for your proposed name, along with various iterations and misspellings. If you find an obviously conflicting trademark, which is used for similar goods or services, you may consider finding a new name. If you plan to offer your goods or services in other states, you should also search the trademark databases of those states.
Similar searches may be run on Google to determine whether there are other businesses using your proposed name for similar goods or services. You may find that there is another competing business using your name, but that the business has not yet registered a trademark for that name. Even with no registered trademark, that business could still potentially sue for infringement of what is called a “common law” trademark, or that business could prevent you from obtaining a trademark registration.
Domain Name Registries
Finally, you should run a domain name search to see whether a competing business is using your proposed name in a domain. Domain name searches can be run here. As with conflicting names you find on Google, a competing business that is using your proposed name in their domain could be problematic for you down the road, not to mention the fact that you may be unable to register a website with your desired domain name.
Formal Trademark Search
If your preliminary trademark search does not identify any obviously conflicting marks, a formal search should be commissioned. Your attorney will use advanced search methodologies, which are beyond the scope of this article, to identify other potentially conflicting marks that your preliminary search will likely miss. Moreover, your attorney will be able to give you guidance as to whether or not particular trademarks will be problematic.
To learn more about trademarks, trademark searching, and the protection of your intellectual property please contact Peer & Hart at (760) 239-0229.
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