Why Do I Need to Conduct a Trademark Search?

Why Do I Need to Conduct a Trademark Search?

by Joe Runge, Esq., November 2016

You drag the dark half of the pink sleeping cat yin-yang icon three pixels to the left. You sit back and admire your work. The logo is perfect and zen kitty bliss will soon be the best blog for feline-inspired mindfulness. Come to think of it, it's the only blog for feline-inspired mindfulness.

Once the world sees your blog, there are going to be so many copycats. How do you turn that great logo into a valuable trademark?

Trademark Name Search

The answer is to search trademarks. Trademark searches help you find similar goods or services that will limit your ability to protect your mark. Trademark protection exists so that consumers know the source of goods and services. A trademark has to uniquely identify your goods and services as coming from you. If someone else is using a similar mark for a similar purpose, then their use of the similar mark will limit your ability to protect yours.

Conducting a U.S. trademark search is easier than ever. Any entrepreneur who wants to register a trademark can use amazing resources for trademark searching—all for free. The trick is knowing what to look for and how to find it.

The first step is to think like the trademark examiner. The United States Patent and Trademark Office (USPTO) is going to look at the trademark as you present it. Examiners will try to look at your trademark as a member of the public would. Will it stand out from all the other trademarks as identifying goods or services coming from you? Make sure to use a good sample of your brand and look closely at all the fields you may want to use it in. Then take the time and go through the database.

Every federally registered trademark lives in a database and is searchable at the USPTO's website. Start with a trademark name search and see if anyone else is using your exact name, logo, or brand. If not, then you are going to have less trouble securing a federally registered trademark. If someone is, then you are going to have to look a bit closer.

Likely Confusion

A trademark is exclusive; you can prevent other people from using your trademark or a mark like it on their goods and services. The goal is to make it clear to your customers—just by seeing your mark—that you produced that product or provided that service.

Just because someone else has protected a similar trademark does not mean that you are out of luck. For example, zen kitty bliss may also be a cafe in Portland, or a pet boutique in Soho. To prevent you from getting your trademark, other trademarks must cause confusion as to the source of goods from your customers. Your plan to blog about mindfulness using cats as a meditative tone is very different from a pet store or a cat-themed cafe. The USPTO will consider if the fields that use the same name are close enough to cause potential confusion.

The confusion does not have to come from protected trademarks. If you only conduct a registered trademark search, then you may miss businesses close by that use similar names. Look around for similar businesses offering goods and services in your same area. For example, the existence of another blog, puppy zen bliss, may limit your ability to secure a trademark registration. If puppy zen bliss similarly discusses pet-inspired mindfulness, then you could have a long road to meaningful trademark protection.

Similarly, geography is another consideration regarding potential confusion. The zen kitty bliss cafe in Portland may cause no confusion with a blissful zen kitty coffee shop in Austin. If both businesses have limited geographical reach, then the trademark office will be less concerned about customers being confused as to the source of the services provided by each business.

It All Starts with Your Search

Trademarking is not a simple process. Your biggest threat to getting the protection that you want is the way in which other businesses use your brand or brands like it. An accurate trademark search is absolutely essential to obtaining strong trademarks. Additionally, searching trademarks is easier than ever, so there is no reason why any person seeking a trademark shouldn't start with a robust federal trademark search.

Beyond having the perfect brand design, you need to have an idea of how your business is going to use the trademark before you start searching. A business may use a trademark that is similar to that of another business. So long as the use does not confuse the customers of either business, then the overlapping trademarks are possible. Knowing how you are going to use your mark is essential to interpreting the results of your mark.

Finally, if you search early, then you can find out the bad news sooner—before you build an inventory of zen kitty bliss yoga pants and coffee mugs. You can re-brand your business or shift your strategy to minimize the fight over whose rights will prevail.

When you register a trademark through LegalZoom, a basic trademark search is included. If you need a more thorough search for similar, or competing marks, you'll receive a discount on a comprehensive trademark search. Start protecting your brand today by registering a trademark online through LegalZoom.