How to Conduct a Trademark Search

You've finally decided on the catchy word, symbol or slogan that you'll use to market your product, service or Web site. Before you proceed any further, make sure somebody isn't already using it in a way that might lead to customer confusion.

Difficulty:

Moderately Easy

Instructions

Things You'll Need

• Personal Organizers
• Computers

Conducting a Search

1. Understand your objective: Ideally you should search all registered and unregistered trademarks, of which there are millions.

2. Understand that you are searching for trademarks that sound like, look like or mean the same thing as your proposed trademark.

3. Begin your search with the free trademark database on the U.S. Patent and Trademark Office's (PTO's) Web site. The PTO's database consists of all registered marks and all marks for which registration is pending.

4. In addition to searching for registered or pending trademarks on the PTO's Web site, search the Internet informally for unregistered trademarks and use the Thomas Register website. In addition, check the availability of domain names containing your proposed trademark at the Network Solutions Web site.

5. If feasible, visit your local Patent and Trademark Depository Library (PTDL) and use their research materials. A list of PTDLS (there is at least one in every state) is accessible from the PTO's home page.

6. Consider using a professional search service. You can order a complete search of registered and unregistered marks through Trademark Express, Thomson and Thomson, CCH Trademark Research Corporation or one of the PTDLs that offer electronic search services for very reasonable fees.

Analyzing Your Search Results

1. Go ahead and use your selection if, after your search, you determine that your proposed trademark is not the same as or similar to a trademark that belongs to someone else. Begin taking steps to protect your trademark as well. See "How to File for Federal Trademark Registration."

2. Decide whether customer confusion is likely to occur if you use your proposed trademark, if your search does turn up possible conflicts (meaning that customers might confuse the underlying products or services or their source). Customer confusion is unlikely if the products or services don't compete with each other and are not marketed through the same channels (for example, Scott Paper Products and Scott Sunglasses). If customer confusion is likely to occur because of your proposed trademark, pick an alternate from your list and start over.

3. Ask yourself if your selection is the same or very similar to a famous trademark, once you've determined customer confusion isn't likely to occur because of your proposed trademark. The owner of a famous trademark may stop another company from using a highly similar trademark even if its customers aren't likely to be confused between the products of the two companies (if another company's use of the famous trademark is shown to diminish its distinctiveness or disparage its reputation for quality). If your proposed trademark is the same or very similar to a famous trademark, pick an alternate from your list and start over.

4. If you're sure customer confusion is not likely, and your proposed trademark does not strongly resemble a famous trademark, you may decide to go ahead and use the trademark.

Tips & Warnings

• Conducting your own search can save money, but you must take the time to search exhaustively. Remember, redundancy is good when doing a trademark search.

• For professional search services, click on the sites listed in the Related Sites section, below, for direct links to such services. Expect a fee of roughly $200 to 350 for a professional, comprehensive search. Even if you decide to hire search services, you're likely to save money if you do some quick, preliminary searches yourself.

• Professional services will also search lists that aren't available on the Internet, such state trademark registers and trademarks in other countries, and have proprietary lists of unregistered marks that you may not find in your trademark search.

• To help determine whether customer confusion is likely, if the conflicting trademark has been registered, compare the class assigned by the PTO to it and the types of goods and services it represents (see the PTO trademark database).

• If you are uncertain as to whether your proposed trademark would infringe an existing trademark, use a variant of the Golden Rule: How would you feel if you owned the existing trademark and someone started to use your proposed trademark? Ask a friend the same question.

• Be aware that any particular list you use to search for unregistered marks, such as the Thomas Register, may be incomplete.

• Trademark searching is a learned skill. Before putting thousands of dollars into promoting a trademark or a website, strongly consider spending a few hundred dollars on a professional search to round out your own efforts.

• If your proposed trademark is even remotely similar to an already-existing registered trademark, and you decide to use it anyway, you could be challenged at some point by the owner of the already-existing trademark'an expensive proposition even if you are legally in the right. Play it safe and do your best to be completely original.

• If you are considering using a trademark that resembles an existing one in appearance, meaning or sound, consider consulting a trademark attorney for an opinion.

• Analyzing your search results is a complicated task. This short checklist suggests a course of action, but to ensure you'll end up with a trouble-free trademark, you should educate yourself further about the ins and outs of trademarks by reading self-help materials.

• This information is not intended as a substitute for personalized advice from a knowledgeable trademark lawyer licensed to practice law in your state. For specific, up-to-date advice geared to your specific situation, consult an expert.