Before spending money on new packaging, marketing and advertising for that new brand name, it’s important to search trademarks that are already registered. How does one search trademarks to find out if yours is already available?
The US Trademark Office website is a good starting place, but it is only the beginning and is not a substitute for a full professional search. Our firm will search trademarks that are pending and registered at the US Trademark Office as a preliminary screening effort. However, marks need not be identical to prevent your registration based upon confusing similarity which is the test the US Trademark Office uses to decide whether you can register your name.
The test, called, likelihood of confusion, also takes into consideration similarity of site, sound and meaning (the trilogy), including translations of foreign words that have the identical meaning. As a practical matter it is only possible to obtain a complete picture of the risks from other users in the market by performing a professional search through a firm such as Thomson Compumark.
In addition to federal registrations, there are trademark registrations available in all 50 states. Common law trade directories and domains are also included in a professional search, sources which are difficult to search without the aid of a professional. Thomson provides our clients with not only with a sophisticated set of search queries which will identify sound alines and misspellings, it also provides our clients with state trademark registration, trade directory searches, and domain names. Domain names not registered as trademarks can be a land mine to the new brand owner.
Why is it so important to search trademarks? Take this example. Pinterest just lost the right to register and use Pinterest in all of Europe because it waited two years to file a trademark. In the meanwhile a British start up called Premium Interest filed first and was held to have rights. Pinterest European Trademark. Last but certainly not least, some courts have ruled that failure to search is akin to negligence. If you are sued for adopting someone else’s mark, your failure to conduct a search can be considered evidence of bad faith.