After you pick your trademark to use in your business, you should conduct a trademark search. The trademark search tries to find other marks that are similar to the mark you plan on using.
Why should you conduct a trademark search?
Failure to conduct a trademark search could cost you tens of thousands of dollars. If you’ve already committed to your mark, you would have built out your website, ordered packaging, and marketed your brand to others. If there is a conflicting mark, you may have to rebrand your product. You may have to pull products off of store shelves. You may have to destroy inventory. You can avoid wasting your money by performing a basic trademark search first on your own.
I suggest that you try to conduct a search on your own first to save yourself money. You can use the steps below. Thereafter, if you can’t find any conflicting mark, call us to conduct one for you.
What website do I use to conduct a trademark search?
We subscribe to a subscription-based trademark search tool to conduct trademark searches for our clients. For non-lawyers, you can use the trademark search function at www.uspto.gov. The primary difference between the two is that the subscription-based trademark search tool performs better phonetic equivalents and allows the searcher to review and eliminate more marks. However, if you find a conflicting mark by conducting a trademark search on the USPTO website, the result is the same. You have to change your mark. So, why not start with the free trademark search and then progress to a paid search by a trademark attorney?
Steps to conducting a trademark search
Step 1: search for “USPTO TESS SEARCH” on google.com to find the trademark search tool on the USPTO website. The first link will be a deep link within the USPTO website. Click on the link.
Step 2: Search for “Search our trademark database (TESS)” button. Click the button.
Step 3: Click on the link “Word and/or Design Mark Search (Structured).
Step 4: In the field for the first Search Term, enter your trademark.
Step 5: For the Operator field, select “AND.”
Step 6: In the field for the second Search Term, enter the goods and services being labeled with your mark.
Step 7: Select “Submit Query” button.
Step 8: Review search results for conflicting marks.
How to review search results for conflicting marks?
In reviewing the search results, you need to consider the similarity of the marks and the similarity of the goods/services.
If two marks are similar, it does not mean that you cannot use the mark. For example, many marks are similar but are used by different companies.
F1 Firearms (US Trademark Reg. No. 5431155) is not likely to be confused with F1 (US Trademark Reg. No. 5859778).
TUMI STAFFING (US Trademark Reg. No. 4520498) is not likely to be confused with TUMI (US Trademark Reg. No. 6112867).
FURTHER TARGET (US Trademark Reg. No. 6447940) is not likely to be confused with TARGET (US Trademark Reg. No. 6576869).
Why is this?
F1 Firearms (US Trademark Reg. No. 5431155) is not likely to be confused with F1 (US Trademark Reg. No. 5859778) because F1 FIREARMS for firearm-related products are unrelated to F1 for racing cars.
TUMI STAFFING (US Trademark Reg. No. 4520498) is not likely to be confused with TUMI (US Trademark Reg. No. 6112867) because TUMI STAFFING for employment-related services is unrelated to TUMI for luggage.
FURTHER TARGET (US Trademark Reg. No. 6447940) is not likely to be confused with TARGET (US Trademark Reg. No. 6576869) because FURTHER TARGET for yoga instruction services is unrelated to TARGET for retail store services.
Disclaimer: this guide is not a substitute for legal counsel, and by using this information you assume all responsibility.