You’ve started a business and registered your business name in your state as your trade name. That’s the name you’ll use on your bank account, tax return, and other official documents. You’re ready to start operating in your state, but you’re not done yet.
Once you start using your business name to promote your products and services in the marketplace, it becomes a brand name. Just because you registered your business name and got permission to open your doors within your state doesn’t mean that you can use the name to promote your goods and services without hitting some major roadblocks.
State registration of your business name has nothing to do with trademark registration of your brand name. Trade names and trademarks are two very different things.
The first step to branding your business is picking a good brand name, but once you pick that name, your work isn’t done. You need to make sure that you can freely use that brand name to promote your products and services now and in the future.
In other words, you don’t want to invest time and money into building a brand that can’t grow with your business. You need to conduct a comprehensive trademark search to ensure there are no conflicts with your brand name that could prevent you from using it now or expanding in the future.
What is a Comprehensive Trademark Search?
Trademark searches come in many shapes and sizes. A truly comprehensive trademark search typically costs at least $1,000 and is ordered by an intellectual property attorney using a professional search company.
The attorney gets a report that is hundreds of pages long, reviews the report and all of the potential conflicts in its entirety, and provides a written opinion advising the client of any potential problems with the name the client wants to use.
Compare that comprehensive trademark search with a preliminary search that anyone can do by visiting the U.S. Patent and Trademark Office website and searching its database. The differences are massive.
The biggest problem with relying on the results of this type of search is that the U.S. Patent and Trademark Office database only includes active records and direct or nearly direct matches. If you search for “Skyless,” you won’t get results like “Schyliss” or “Skyler” even though your name could conflict with those marks.
Another option is to work with your business attorney or a legal document services provider like LegalZoom or MyCorporation to conduct a trademark search. Be careful because some of these providers might advertise that they offer comprehensive trademark searches, but they’re not truly comprehensive.
These trademark search services are typically far less expensive than the $1,000 or so that an intellectual property attorney will charge you for a comprehensive search, which should be your first red flag that they’re not really comprehensive at all.
These search services might advertise that they check the USPTO database, state corporate databases, domain names, social media profiles, and more. This might be true, but unless they’re searching all of those sources and databases using highly advanced search methods, they won’t catch all potential conflicts.
The spelling example discussed earlier is just one reason why the search process matters as much as the sources and databases used to conduct the search. If your mark is determined to be confusingly similar to another mark in consumers’ minds, you could be in trouble.
Spelling matters, line of business matters, and future growth plans matter. These are just a few nuances that separate a truly comprehensive search from every other type of search available. They’re not the same … not even close.
Another key difference between comprehensive trademark searches and all other searches is related to common law. The United States is the only country where the law gives rights not to the first person to register a mark but rather to the first person to use a mark in commerce.
What does that mean to you?
It means that a search that does not include a detailed common law search (which no search does except a truly comprehensive search) is useless.
Think of it this way: If you search the USPTO database for your brand name and get no hits in any class of goods or services, you might think that the mark is clear for you to use. But that’s not necessarily true.
For example, a business could use that name already but never registered it.
If that business operates in a similar business as yours, they could oppose your mark when you try to register it.
If you choose not to register at all, that other company could find you in the future (the Internet has caused the world to shrink and they will find you) and demand that you stop using your brand name. You’d incur legal fees to fight and might have to completely rebrand your business, which is incredibly expensive.
Similarly, a USPTO search or a search using a free tool like the one available at Knowem.com could include canceled marks in their search results. If you see only cancelled marks in the search results, you might think that the mark is clear for you to use.
Be careful. There could be someone else using the mark who has the rights to it based on common law.
For example, the owner of the original mark might not have renewed the registration but still uses the mark. Another company may have started using the mark since the original registration was cancelled. If either of those companies offer goods or services that are similar to yours, you could get into big trouble later if you use that name.
Fighting a trademark infringement can be very expensive but doing a comprehensive trademark search now to ensure that your mark is clear to use and grow with your business will end up costing you significantly less money in the long run.
What’s Included in a Comprehensive Trademark Search?
A comprehensive trademark search is critical to ensure your brand can grow with your business. While it’s costly up front, the amount of money it could save you in the future is much, much higher.
Keep in mind, not all “comprehensive” trademark searches are truly comprehensive. A true comprehensive search is usually only done by an intellectual property attorney who can digest the hundreds of pages of possible conflicts that a professional search company finds and determine which are potential problems and why.
A comprehensive trademark search includes a search of:
- The most current data using the most expansive search methods
- Active and inactive federal records
- All relevant federal classes of goods and services (not just the class for your mark) because there could be indirect conflicts
- Federal indirect conflicts other than classes
- Multiple state databases
- Common law conflicts
- Web-based and traditional sources (e.g., trade journals, industry publications, and more)
- Traditional domain names
- Social media usernames and profile URLs
Weighing the Risks and Rewards
Remember, it’s the common law search and searching beyond exact matches and directly-related classes of goods and services that are missing from most search services.
I can’t tell you how many clients I’ve had who conducted trademark searches using free or cheap online tools and services only to find themselves facing an infringement lawsuit years later.
Don’t let that happen to you!
Think of it this way: If you hired an exterminator for your house, would you only pay for him or her to spray one room?
If you bought homeowner’s insurance, would you only pay for fire insurance or would you pay for fire and theft insurance?
If you lived in a flood zone, would you also pay for flood insurance?
Only you can decide how much you want to invest in protecting your business and your valuable assets like your brand, so when it comes time to do a trademark search, consider the risks and benefits of the options available and choose wisely.
Trademark Photo via Shutterstock
That’s another reason to always rethink the brand name you have come up with. Make sure nobody else registered it or you’ll face some problems in the future. This is true especially if you already poured all of your efforts in promoting it.
Aira, you’re right, and as I mentioned in my article, even if someone else didn’t register a mark, if they’re already using it and yours could be perceived as confusingly similar, you could find yourself in big trouble down the road. That’s they part that only a comprehensive trademark search can identify.
Now-a-days, Real-time Trademark monitoring has become as essential step to follow. And, for better efficiency in Trademark search results, we should use “Automated tools/databases” (just to reduce the working hours) + “Manual analysis” (to increase the accuracy level in search results).
Nancy, you just described our MO for volume-based trademark watches!
Nancy, Please be careful of relying only on automated tools for trademark searches. I could show you a long list of people who have relied on them and paid the price later. They’re inadequate at best. I can’t stress this enough.
So could you please make recommendations of some sources to go through to complete my comprehensive search accurately? Thanks!
Hi Nicole — Thank you for your comment. I highly recommend you work with an attorney who specializes in trademarks. There are several good ones available through Google searching. There are numerous search products offered through sites like LegalZoom, but they aren’t provided legal services or advice, unless you hire one of their attorneys. In the end, attorney reviewed is the best option!
Hi Kelley, Good article. There is so much gray area in trademark law that business owners don’t even know to think about. I wonder how often common law trademark owners attempt to enforce their rights over a registered owner? Are there many IP attorneys who take infringement cases on contingency?