Perform a Trademark Search. When you first conceive of a mark that you would like to use to market your goods or services, immediately check to see if anyone else is using it. There's no sense wasting your time with the rest of the procedure if someone else has already registered it.
You also need to see whether anyone has registered a mark that is substantially similar to the one you want to use. You do this by checking other people's applications to the United States Patent and Trademark Office (USPTO).
There are two main tests for "substantial similarity." First, is the trademark likely to cause confusion among consumers so that they might mistake the two suppliers of products or services for each other? For example, it would be confusing to have a software company called "Micrasoft," because there is already a software company (you may have heard of it) called "Microsoft." Second, is the new trademark likely to cause dilution of the respect for the older one? For example, no one would mistake "Microsoft Porn Service" for the big, bad software company, but you'd better believe the proprietor would be receiving a letter from Billy's lawyers in short order.
The USPTO has a free searchable database of federally registered trademarks, and you can use this whenever you want to perform trademark searches (we'll tell you how in a minute). Unfortunately, because of the two schemes of trademark protection (common law and federal--you are paying attention, aren't you?), not all of the trademarks in use will be federally registered. Therefore, the USPTO's free database won't tell you if someone is using an unregistered trademark that has common-law protection. Furthermore, the USPTO's database is usually a few months behind on registered trademarks, so it won't show you recently registered trademarks. These issues make your trademark search more difficult, but we'll try to help you out.
You can also access more up-to-date records than what the USPTO offers with an online trademark-search service like the one in Resources. Its instant, free online searches include weekly updated federal records, plus Canadian trademarks, all registered Internet domain names, and a huge library of U.S. company names.
Why bother searching?
There are two sorts of risks associated with not performing a thorough trademark search. First, if you send in an application and it is rejected because there is an existing registered trademark that is identical or substantially similar, the USPTO will still keep your application fee. Second, if you infringe on someone else's trademark, you could suffer legal consequences. If you use a trademark someone else has federally registered, you could be considered a willful infringer (because you could so easily have checked) and be massively penalized (say that out loud, and you won't want it to happen to you). If you infringe on someone else's trademark without knowledge (i.e., it's not federally registered and you didn't know about it), and the party upon whose trademark you've infringed successfully sues for an injunction against your use, you will have to stop using your trademark and pay whatever it costs to change to a new trademark. It's unlikely that you will be successfully sued for damages for trademark infringement, because it's difficult to prove that an infringer's use of the trademark actually harmed the original user's business (but this is also a possibility).
We're sure that most of this information about trademark searches is confusing and upsetting to you. We wish it could be otherwise, but we're sad to say that, if you are in doubt, you will probably have to consult a trademark attorney or a trademark-search service (you can find these in your Yellow Pages or through Martindale.com). However, we're pulling for you to be able to do this on your own. To see whether or not someone else is using an identical or similar trademark to yours, you'll have to perform a trademark search. There are a number of ways you can do this, and we'll list them from the cheapest and least certain to the most expensive and most certain.
Search for free on the Internet or in a USPTO Library
Yes, the best things in life are free, including scanning endless websites to see if other people are using the trademark you fancy. The first thing to do is go to the USPTO's database of federally registered trademarks and conduct a search of the word or phrase you intend to use, or of words or phrases that describe the symbol or design you intend to use. Try several different combinations, instead of simply the exact word or phrase you want, because you need to see if there's anything substantially similar in use. (Remember?) This database is free to search as often as you want.
Next, conduct similar searches on the Internet using your favorite search engine(s). Type in the exact word or phrase and see what comes up. Chances are, you'll get thousands, and you then have to use your web-searching skills. See if any of the identical or similar occurrences in websites are being used to promote a product, and have a little TM (™) or an R in a circle (®) next to them. If you find an identical trademark, you're out of luck. However, if you find a similar trademark, you still might be able to use the one you want, but you'll probably have to check it with a lawyer or a trademark-search company (discussed later in this step).
It's also a good idea to check in the phonebook, Yellow Pages and/or with state business directories to see if there is anyone using the trademark or something similar. Common-law trademark protection applies to anyone who has used a trademark, and a good way to find out if someone else has rights in your proposed trademark is to see if it occurs anywhere else.
This method is not very certain, but if you're the gambling sort--and we're not recommending that you be that sort in any way that exposes us to liability--you might want to give this a shot and apply if you don't find anything identical or similar.
If large quantities of your time are worth nothing, you can also do a complete trademark search for free by going to a local Patent and Trademark Depository Library and following the instructions they'll give you there. We assume you're way too lazy to do this, but we mention it anyway, just to give you the option. You can find out more about these libraries, including their locations, in Resources.
If you do find something you think might be similar to the trademark you want to use, you should probably consult with a trademark attorney.
If you do not have the time to search on your own, you can use an online trademark-search service for a reasonable price. You can search all the names you want in their online databases, and it's free! Not only are their records updated weekly, their online results also show all pending, registered, expired, canceled and abandoned trademark records from the USPTO. This online service also throws in a Canadian trademark search and a search of all registered domain names under the .com, .net and .org extensions. NameProtect.com also offers state, common law and international comprehensive search reports for an extra fee, and a great online tutorial that walks you through the federal trademark-application process.
If you're lazy, risk-averse or both, you should probably pay a professional search service to do your search. This service doesn't come cheap--a complete search of all registered and unregistered marks could run you between $300 and $500--but it gives you peace of mind and someone else to blame. Some of these services will also provide you with a legal opinion about whether or not the trademark you want to use is substantially similar to someone else's trademark. You can find these in the Yellow Pages or online in Martindale.com (go there and select Trademark Search Services from the pull-down menu next to the heading "Service Type," then enter your state and city).
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