If you have an exciting new name you'd like to use for your goods or services, you should conduct a trademark search to insure that your new name is not already being used by someone else.
A trademark search is an investigation to discover potential conflicts between a proposed mark and an existing one. A trademark search reduces the possibility of inadvertently infringing a mark belonging to someone else and it can save you money if you’re planning to register your mark by allowing you to eliminate choices that are already registered and in use.
Often, a professional search agency is used to conduct the trademark search — by first checking both federal and state trademark registers for identical or similar marks and then checking the Internet, trade publications, telephone books, and other sources to see whether the mark is in actual use.
What Happens if You Use Someone Else’s Trademark?
If you use another company's trademark and the other party’s trademark has been federally registered, a court will assume you knew it was federally registered and you might have to pay the trademark owner's attorney fees as well as damages. Not only that, you'll likely have to destroy all existing packaging, business cards, and other materials that used the infringing trademark. Even if the other trademark owner does not sue, the owner can oppose your trademark registration, and a trademark examiner could deny you the right to register the mark because the examiner uncovered the competing pre-existing use. By the way, even if a trademark is unregistered, its existence could prevent you from registering the trademark or from even using the trademark legally.
Types of Trademark Searches
There are several levels of searching
- you can do your own search of federally registered trademarks at the U.S. Patent and Trademark Office (USPTO) at www.uspto.gov.
- you can do an Internet search to see how and where other companies are using the name
- you can do a fee based trademark search by using a trademark searching company, or
- you can also search domain names at most domain name registrars.
The Basic Trademark Clearance Search
It is possible to conduct a preliminary online trademark search to determine if a trademark is distinguishable from other federally registered trademarks. This can be accomplished using the USPTO’s free searchable TESS (Trademark Electronic Search System) database. Using TESS, a trademark owner has free access to records of federally registered marks or marks that are pending (applications undergoing examination at the USPTO). At the USPTO website (www.uspto.gov), click “Search TM database” under Trademarks. Here’s a video that explains the basics.
Sifting Through Search Results
Chances are you'll find lots of similar trademarks being used. You'll need to sort through your search results and find those trademarks that you are prevented from using. Generally, if another company is using the same or a similar name to market different products and services — for example, someone is using HAPPY CAMPER for psychology services, and you want to use it for emergency supplies — it will be fine for you to use the name for your business. But if another company is using the same or similar name to sell the same or similar goods — for example, camping supplies — the decision is not as clear.
For More Help
For help determining if you can or can't use a trademark, see Trademark: Legal Care for Your Business & Product Name. If you're ready to apply for trademark protection, Nolo can file a trademark application on your behalf. Our online trademark registration program gathers all the information needed to create your trademark filing, with practical help at each step. For more information or to get started now, see Nolo's Online Trademark Application. Trademark search results and tradeark rules can be complex and confusing. To best protect your business, you may benefit from consulting with a trademark attorney.