Trademark Search and What to Know: The Intellectual Property Application Series

In this ‘Intellectual Property Application Series,’ I’ll be discussing trademark searches.  I’ll explain what a trademark is, what to know about a trademark search before filing for registration, and why a trademark search is an important tool for protecting your product or service.

What a Trademark is:

A trademark is a type of intellectual property that distinguishes and identifies the source of a good and/or service.  Trademarks also assert one’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the marketplace.  In short, trademarks are used by companies to distinguish one’s products/services from another.

The word “trademark” is generally used as an umbrella term to include both trademarks and service marks.  More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided under either a service or trademark vary slightly.  This is because they are specific to the classes of goods/services they protect.

What to Know About a Trademark Search Before Filing – The First Step:

One of the first steps to registering a trademark is to investigate the mark and confirm if it is unique.  For this, a person performs a search of currently used marks. An individual can attempt a search, but a patent attorney, patent agent, or a person who specializes solely in these types of searches can conduct a formal search.  The United States Patent and Trademark Office (USPTO) even has some advice about hiring a private trademark attorney.

To conduct a formal search, an experienced professional uses specialized tools and databases to compare the potential mark to the millions of published and registered trademark applications.  You can find these applications in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific Secretary of State Office databases. A thorough search would also include a search of common law marks. Even the most in depth search may still miss a similar mark. To confirm if a mark is unique could save a company from a lawsuit for accidentally infringing another’s mark. This could not only save time and money, but also a company’s reputation.

Trademark Requirements and Use:

Once a mark is decided on, there are specific requirements that must be met for a trademark application filing to be accepted, and for the mark itself to qualify for federal protection.  The USPTO defines trademark application filing requirements. To qualify for federal protection via registration with the USPTO, a potential registered mark must be unique to the individual business that is applying for its use.  The trademark must also either be in current use in commerce or its owner must intent to use the mark.  

A search is integral in determining if a potential trademark is unique.  There exists a vast number of trademarks in use by businesses in the U.S. and internationally. Both the use of words/phrases and their classes identify these trademarks. Trademark classes identify a trademark or service mark’s use in commerce. More specifically, the use of a trademark identifies it and a trademarks class(es) identify its use. A properly performed trademark search takes into consideration both the words/phrases of a potential trademark and the classes we associate to it.

Even if a trademark is currently in use by another business, registration of a new potential trademark may still be possible. This is a possibility if the potential trademark is under different classes, for marketing different products or services than the prior registered trademark. One company’s use of a word or phrase in a trademark may be classified under one set of goods/services, while another company can use the same words/phrases to market an entirely different set of class of goods/services.  It’s impossible to determine if a mark is unique without an in depth search.  

Trademark Searches and the Trademark Filing Process:

After the USPTO receives an application, the trademark Examiner reviews the mark for adherence to the filing regulations.  The mark must also be distinctive and its specimen must show the mark in current use in commerce. To see if the mark is distinctive, the Examiner will compare the mark to the other marks both published (pre-registered) and registered on the USPTO database. This is the formal search that the USPTO requires to qualify for registration.  

If a similar mark is not found during the official search, the application will be published in the USPTO Official Gazette.  Publication in the Official Gazette begins a thirty-day Opposition Period. During this time, a third party may contest registration of the mark.  To contest registration, an attorney would file an opposition to the mark with the Trademark Trial and Appeal Board (TTAB).  If no opposition is filed, the mark is allowed for registration.

Trademark registration grants a mark protection under U.S. federal trademark law.  The USPTO will add the registered mark to its’ list of registered applications. Individuals and poffesional searching authorities can use this official list of registered marks to search for and compare potential marks to currently protected marks.

Why Trademarks and the Trademark Search are Important Tools:

Trademarks are important in their ability to protect both consumers and the businesses that serve them.  They provide businesses with a way to protect their identity and the goodwill associated with their goods/services.  The rules that govern trademarks also help businesses compete fairly. To protect from monopolization, the USPTO does not issue trademarks which use generic terms that are used across an industry. Without a proper search, the trademark process can be fraught with wasted time and money.

Trademark laws also help protect consumers from deceit by counterfeit products or fraudulent companies.  Trademarks do this by signifying the goodwill and identity of a company. The goodwill of a company indicates to a consumer a level of quality or trust.  If a business can’t protect that reputation, it could be the consumer that pays the greater price. An in depth search and ultimately the registered trademark gives an owner the confidence to use a mark to identify their goods or services. Consumers then have the opportunity to build trust in that mark.

Don’t leave a matter as important as your intellectual property to chance.   Willing help in the form of an experienced legal team is here and is just a call away.  Thrive IP(R) patent attorneys are located in Charleston, SC; Greenville, SC; Knoxville, TN; and Alexandria, VA. Please contact us if you have an interest in filing a trademark search, trademark application, or to discuss other intellectual property matters.