USPTO trademark searches, also known as “preliminary” searches, “knockout” searches, or “clearance” searches, allow you to determine the strength and availability of a mark.
fun fact: trademark lawyers often say “mark” instead of trademark
Although you are not required by the USPTO to complete a trademark search, failing to do so prior to registration can result in expensive, time consuming delays and, in the worst-case scenarios, a denial of your application. This is because many potential trademark registration problems, though easily avoided, are fatal to your application.
Depending on the resources available to you and your comfort for risk, you might perform a USPTO trademark search yourself or hire a professional to perform the search for you. Just keep in mind that, statistically speaking, using an experienced professional like at the Leavitt Eldredge Law Firm for your trademark search and registration has been shown to increase your registration chances by as much as 50%.
You can also vary your trademark search to be more or less comprehensive to accommodate your available resources and tolerance for risk. For example, most applicants find a simple USPTO trademark search for similar marks within their industry to be sufficient while others require a detailed analysis across multiple industries and trademark databases (including state, USPTO, and/or international databases).
Most comprehensive trademark searches additionally provide an analysis detailing the existence of common law trademarks that could potentially create obstacles for your trademark, even if the mark itself is available for registration. Other approaches include restricting the scope of your trademark search to a detailed analysis of your known competitors and their trademark rights.
USPTO trademark searches can also be used defensively to monitor whether a potential competitor has applied for a similar mark that could negatively impact your existing trademark or brand. Incorporating regular, defensive trademark searches will allow you to more efficiently police your mark and oppose competitor registrations.
How to Perform a USPTO Trademark Search
The scope and detail of each individual trademark search will vary widely based on the skill of your researcher and the resources allotted. For most people a simple “knockout” search of direct hits within the USPTO’s publicly available Trademark Electronic Search System (TESS) is sufficient whereas others may require more extensive trademark searches both within and without the TESS database. Although a detailed instruction on how to efficiently and effectively perform your own trademark search falls outside the purpose of this informative description, the following checklist should be useful:
- Identify your applied for mark;
- Identify the goods and services you wish to associate with your mark. The USPTO has provided a handy master list that can assist you;
- Search for any direct hits on your applied for mark within the TESS system;
- Search for any translations, transliterations, or phonetic equivalents to your applied for mark within the TESS system;
- If your mark includes a design element, search for appropriate design codes within the TESS system. The USPTO has provided a handy Design Search Code Manual to assist you;
- Identify which results, if any, from your searches above are associated with similar goods and services as your mark;
- Identify which results, if any, from your searches above were rejected by the USPTO as weak marks.
Keep in mind that a USPTO trademark search through TESS will only identify marks that are registered federally or applied to be registered federally. Therefore, if you have a competitor who is currently using the trademark without federal registration you may need to determine the strength and availability of your mark through other means, such as through Search Engine listings (e.g., Google) and 3rd party vendors (e.g., Amazon). If you have any questions about a trademark search, feel free to contact us and we’ll be happy to help.
Trademark Search Cost
You may perform your own trademark search for free or pay for someone else to search for you. Usually a paid trademark search is a one-time transaction in conjunction with an intended or pending application for trademark registration. However, it is also increasingly popular to monitor both potential infringing uses of your trademark and competitor trademark expansion via an ongoing (usually monthly) report.
Because the depth and quality of each USPTO trademark search or monitoring service varies widely it is also important to know what you are paying for. For example, your quoted trademark search or monitoring price might include any one or more of the following:
- Direct and similar match records on the USPTO’s federal trademark database;
- Pending trademark registrations published on the USPTO’s Official Gazette;
- Direct and similar match filings on individual state trademark databases;
- Direct and similar match results for common law (unregistered) trademarks;
- Direct and similar match records on one or more foreign trademark databases;
- Prosecution history for direct and similar match trademarks;
- Litigation history for direct and similar match more trademarks; and
- Opinions regarding any of the above search results and focusing on issues of trademark strength, availability, and infringement.
Basic USPTO Trademark Searches
Unless stated otherwise, any “basic” or “knockout” trademark search service will be limited to direct and similar match records on the USPTO’s federal trademark database and, for most small businesses and startup companies on a budget, this should be sufficient to get a snapshot view of the trademark climate around their existing or intended brands.
Comprehensive Trademark Searches
Comprehensive trademark searches usually expand the scope of a Basic Search to cast as wide a net as you are willing to pay for. If you are filing in the United States, still care about your budget, and don’t intend to expand into foreign markets, a search that looks at both federal and common law trademark sources is usually sufficient for your needs. If, however, you intend to spend significant resources on your branding then casting as wide a net as possible (federal, state, common law, and foreign database, prosecution and litigation history) is more prudent.
Legal Opinions (worth a premium)
Keep in mind that trademarks are a matter of law and that there are many trademark search services unable or unwilling to provide a legal opinion on the results they provide you. This is like being given a map to a minefield but not being told how to read it. Search results accompanied by legal opinions command a small premium but are nearly always worth it.