Why should you conduct a trademark search?
When you apply for federal trademark registration, the U.S. Patent and Trademark Office (USPTO) will search all registered trademarks and all pending trademark applications to see if there are other marks that are similar to yours (called a federal "direct-hit" search. The trademark office will refuse to register your trademark if it finds that there is a “likelihood of confusion” between your mark and another mark.
To minimize the chance that your trademark application will be refused due to a likelihood of confusion, it is a good idea to search the USPTO database for similar marks before you file your application or use a trademark search service. If you file an application and your registration is refused, the filing fee is not refundable.
What does 'likelihood of confusion' mean?
A likelihood of confusion occurs when two marks are so similar that someone might incorrectly assume that different companies’ products or services come from the same source. A likelihood of confusion has two elements:
- The marks themselves must be similar. They do not have to be identical.
- The goods or services that the marks identify must be related to each other. Unrelated goods or services can have similar marks without creating a likelihood of confusion. For example, a mark used by a hat company might be confused with a mark for a shirt company because the two products are both apparel. It is unlikely that a mark for a hat company would be confused with a mark for a savings and loan.
There are multiple ways that marks can be similar:
- The marks may sound the same even though they are spelled differently. For example, “Andy’s Mints” sounds the same as “Andes Mints.”
- The marks may have a similar appearance, even though they use different colors or fonts.
- The two marks may convey the same overall commercial impression, such as when two marks use a similar logo and typeface.
How to conduct a trademark search?
You can conduct a trademark search using the USPTO’s online Trademark Electronic Search System (TESS). TESS contains all the trademark office’s active and inactive registered and pending trademarks. Here are some tips for performing a trademark search on TESS:
- When you conduct a search, you should try to uncover all marks that might be similar to yours, not just those that are identical. That means checking for alternate spellings of words and similar artistic designs.
- If you find a mark that seems similar, the next step is to look at the goods and/or services for which the mark has been registered to see if they are related in any way. Similar marks can be registered if the goods or services are unrelated.
- The USPTO website has additional information and tips on conducting your own trademark search.
Other types of trademark searches
Because trademarks gain protection by being used in connection with goods or services, a trademark does not have to be registered with the USPTO to be valid. Some trademarks have “common law” protection, and others are protected by state trademark registrations.
If you want to uncover all existing uses of a trademark, and not just those that could prevent your trademark from being registered due to a likelihood of confusion, you can might choose to conduct a more comprehensive search, including records for individual states and search online for companies that might be using a mark similar to yours.
Ensure your proposed trademark is available with a comprehensive trademark search. In addition to searching pending and active federal trademarks, LegalZoom's service includes a search of state trademarks, corporate names, common law trademarks, Internet domain names and more. Search results are compiled online for easy reference.
