How to Conduct a Trademark Search to Avoid Infringement

Before you invest time and money in creating and marketing a trademark, you need to conduct a trademark search to make sure that it is not already in use by someone else. 

A trademark search is a process where you determine whether a particular trademark is available for registration and use. It involves searching various databases and sources to see if there are any existing trademarks that are: 1) identical or similar to your proposed mark, and 2) used for the same or related goods or services.

Why is a trademark search important? Because if you use or apply for a trademark that conflicts with an existing one, you may face serious legal consequences, such as:

• Rejection of your trademark application by the United States Patent and Trademark Office (USPTO) or other trademark offices around the world.
• Opposition or cancellation of your trademark registration by the owner of the prior mark.
• Being sued by the owner of the prior mark, who may seek an injunction to stop you from using your mark.
• Loss of your reputation, goodwill, and customer loyalty, as consumers may be confused or deceived by the similarity between your mark and the prior mark.

Therefore, conducting a trademark search is a crucial step in protecting your brand, as it helps avoid costly and time-consuming disputes.

How to Conduct a Trademark Search in the United States

The first step in conducting a trademark search is to explore the USPTO’s trademark database (Trademark Electronic Search System, or TESS). This database contains information about all registered trademarks and pending applications in the United States.

To search TESS, you need to:

• Identify the word(s), design(s), or combination(s) that make up your proposed mark.
• Identify the goods or services that you intend to offer under your mark.
• Choose the appropriate search option (basic, advanced, or structured) and enter your search criteria.
• Review the search results and compare them with your proposed mark.

When comparing your mark with the existing ones, you need to consider not only the visual and phonetic similarity but also the conceptual similarity and the relatedness of the goods or services. The test is whether there is a likelihood of confusion among consumers as to the source or affiliation of the products or services.

For example, if you want to register SYNC as a trademark for computers, you may find that SYNC is already registered for musical recordings. However, there is unlikely to be any confusion between these two marks, as they are used for different and unrelated goods.

On the other hand, if you want to register STAR COFFEE as a trademark for coffee shops, you may find that the same mark is already registered for coffee beans. In this case, there is likely to be confusion between these two marks, as they are used for similar and related goods.

How to Conduct a Trademark Search Internationally

The next step in conducting a trademark search is to search other databases and sources that may contain information about trademarks in other countries or regions where you plan to operate. These may include:

• The Global Brand Database of the World Intellectual Property Organization (WIPO), which covers 57.5 million records from 74 data sources.
• The databases of regional trademark offices, such as the European Union Intellectual Property Office (EUIPO) or the African Regional Intellectual Property Organization (ARIPO).
• The databases of national trademark offices of individual countries.
• The databases of private service providers, such as Thomson Reuters or LexisNexis.
• Search engines, social media platforms, domain name registrars, online marketplaces, and news websites.

When searching these databases and sources, you need to follow the same principles and criteria as when searching TESS. However, you also need to be aware of some additional factors that may affect your search results, such as:

• The language of the trademarks. You may need to translate or transliterate your mark into different languages or scripts, such as Chinese characters, Arabic letters, or Cyrillic alphabets.
• The classification system of the goods or services. You may need to use different classification systems, such as the Nice Classification (NCL), which is used by most countries around the world; or the International Classification of Goods and Services for the Purposes of the Registration of Marks (ICGS), which is used by some countries in Asia.
• The legal system of each country or region. You may need to consult local counsel or experts to understand the specific rules and procedures for trademark registration and enforcement in each jurisdiction.

Why You Should Work with Experts When Conducting a Trademark Search

Conducting a trademark search can be a complex and challenging task, especially if you are dealing with multiple goods, services, or jurisdictions. There are many factors to consider and many sources to consult. You may not have the time, resources, or expertise to do it yourself.

That is why we recommend that you seek professional help from a qualified trademark attorney who can help you:

• Design and execute a comprehensive and effective trademark search strategy that covers all the relevant databases and sources.
• Analyze and interpret the search results and advise you on the availability, registrability, and enforceability of your mark.
• Identify and avoid any potential conflicts or risks that may arise from using your mar or applying for registration.
• Assist you in resolving any disputes or challenges that may occur during the trademark registration process.

We Can Help You Protect Your Brand

At Jurado & Associates, P.A., we have a team of experienced and passionate trademark attorneys who can help you with all your trademark needs. We have extensive knowledge and expertise in trademark law, both nationally and internationally. We can handle any type of trademark search case – from simple to complex, from local to global.

Do not risk using a trademark that infringes on someone else’s rights. Let us help you conduct a trademark search now to protect your brand and your business. You can reach us by phone at (305) 921-0976, by email at [email protected], or by WhatsApp at +1 (305) 921-0976.