How to do a Trademark Clearance Search - Step by Step
At the foundation of any strong brand is a recognizable business name. Simply put, when customers recognize the name of your business and associate it with positive qualities, they are more likely to buy from you. Choosing a name for your business can be difficult. But when you finally come up with one that’s just right, you need to make sure you can protect it. Which is why you should conduct a trademark clearance search BEFORE you using your business name.
Why is it Important to do a Trademark Clearance Search?
So your entrepreneurial journey is just beginning. But imagine it’s two years from now, and everything you’ve envisioned for your business is coming true. You’re bringing in a ton of new customers who love your business so much they’re sending everyone and their Auntie to come buy from you. People are starting to recognize your business for providing a high quality product.
Then… you get some mail from a law firm. You open it up and… SHIT! It’s a cease-and-desist letter. A business 500 miles away with a similar name is threatening to sue you for trademark infringement. What are you going to do?
Well, since this scenario takes place in the future and not the present, YOU can solve this problem rather easily. All you have to do is conduct a thorough trademark clearance search. You may be wondering, “how can a trademark clearance search keep me safe from lawsuits?” Let me explain…
Ownership is Key
Let’s start here – Ownership Matters. As entrepreneurs, we know this to be true. If we didn’t, we wouldn’t have gone out and started our own business.
Still, many entrepreneurs make the mistake of building their business on brand assets they don’t own. This can lead to situations like the example above, where entrepreneurs find out that someone else owns the right to their business name after they’ve already put in the effort to build the brand.
Don’t put yourself in this type of situation. Once you settle on a business name make sure you can own it.
The best way to establish ownership over any brand asset is by registering it for trademark protection with the U.S. Patent and Trademark Office (USPTO). Assuming your business name meets the most basic requirements (use in commerce and distinctive), registering the name as a trademark will establish your right to use it nationwide. It will also give you the right to prevent other people from using a similar name if such use is likely to confuse consumers.
Run a Trademark Clearance Search to Check if the Name is Available
Ideally, you want to protect your brand with a trademark as soon as possible. It is the only way to lock in ownership of your business name. However, applying for a trademark can be costly. Especially if you want to get it right. As a new business owner with limited resources, you may have more important priorities. That’s OK.
But whether you plan to apply for a trademark right away or wait until your brand has built some value, there’s one thing you should run a trademark clearance search immediately.
Conducting a trademark search will uncover whether your name is already in use. If it is, you’ll have to come up with something else. But at least you won’t have to do that after you’ve spent years or months building your brand. If it isn’t trademarked already and there aren’t any conflicting marks, you’ll know that the path to brand ownership is clear. The best part is, if your resources are limited and you have the time, you can do this on your own.
Here are some step by step instructions on how to do a trademark clearance search.
How to Do a Trademark Clearance Search
First of all, prepare yourself. This isn’t your average, run of the mill, internet search. Ownership is on the line. When running a trademark clearance search it is important to be methodical. Your goal is to find out whether anyone else is using a similar name. It’s going to be impossible to figure out that out with 100% certainty. But the harder you look without finding anything, the more likely it is that you’ve got a name that you can call your own.
Your search begins with the USPTO’s trademark database.
Start with the USPTO’s Trademark Search Tool
On the USPTO’s website, you can access the Trademark Electronic Search System (TESS). The TESS contain records of all registered trademarks and trademark applications, whether active or inactive. When searching the TESS, your goal is to find out whether anyone else has applied for and registered a name similar to yours. Notice the emphasis on similar. Remember, an existing trademark does not need to be identical to yours to prevent you from successful registration of your own trademark. The key question for trademark purposes is whether the two names are similar enough to create a likelihood of confusion over the source of the goods or services.
**It is also important to note that a trademark application may be denied for reasons other than a previous, similar trademark existing. Trademarks must also meet other requirements, such as meeting the requisite level of distinctiveness, to be granted. This is a topic we may cover in a future blog post.**
Once on the TESS, click the “Basic Word Mark Search (New User)” under Select A Search Option. You will then see this screen:
The basic search option is the simplest way to search for those who are unfamiliar with more advanced search formats. You may enter your business name under the text box labeled “Search Term.” Select whether you’d like to search for both the singular and plural forms of words in your query by leaving the option for “Plural and Singular” checked. Unselecting the “Live and Dead” option will only show you Live (active) trademarks.
Here are a few tips on how to search the database effectively.
TESS Basic Search tips
1. Try using quotations for phrases, i.e. “Empower Training.” Otherwise, you will receive results for any marks that contain either the word “empower” or “training,” which may return an overwhelming number of results.
2. Search for common variations of your business name. If you have a two-word phrase, try searching for the phrase with the words combined (e.g., EmpowerTraining). Also search for similar spellings, word/number substitutions, abbreviations, and partial matches. (e.g., Empowered Training, Power Training, Empowerment Training, Training to Empower, etc.). Search as many common variations as you can think of.
3. Try truncated searches. Use the * symbol on the first and last letters of a word to complete a truncated search. This allows you to more easily search with words that have common endings. For example, searching *Empower* may produce results that include empowering, empowered, etc.
You can also use the symbol to search for prefixes and postfixes by attaching it to only the first or last letter. For example, searching Empow* will return any results that begin with “Empow.” Similarly, searching *power would return any results that end with “power.”
4. Avoid using contractions. Instead of typing CAN’T, type CAN T.
5. Consider boolean and proximity operators. You may search using boolean operators (AND, NOT, OR, etc) or proximity operators (SAME, WITH, ADJ, etc). Note that using these operators will override the “Result must contain” setting.
Interpreting the results
TESS will display a list of results based on your search query. From the initial results page, you will be able to see the Word Mark (i.e., the trademarked word or phrase), as well as whether the trademark is Live or Dead.
Click on an individual result to learn additional information, such as the Type of Mark, the Filing Date and the Goods and Services class that it belongs to.
Goods and Services describes the types of goods or services the mark is associated with, and lists the International Class and US Class(es) that the mark is registered under. The International Class is typically most useful.
When registering a trademark with the USPTO, applicants must select on of 45 International Classes. These classes represent different categories of goods and services. For example, class 025 is for clothing, footwear, and headwear. Class 012 is for vehicles (See more). For the purpose of your search, be on the look out for trademarks with similar names in similar classes or services. If the trademark you are looking to register would create a risk of confusion about the source of certain products or services, you’ll likely be prevented from registering your trademark.
Search additional sources
Just because a trademark is not found in the TESS does not mean that you are in the clear. Trademarks are often registered at the state level, and therefore you will want to ensure that a similar mark has not been registered within the state(s) you will be operating out of. Some states offer their own individual trademark databases, while in others you may need to contact the state trademark office for assistance. A link to each state’s trademark office can be found here.
In addition, the USPTO recommends a standard internet search i.e. Google to best ensure that no potentially relevant information has been overlooked. A Google search will also help identify how quickly you should move to file your trademark application. If there is another business out there with a similar name, you’ll want to move quickly to register your name to give yourself a better chance to owning your brand.
Running an effective trademark clearance search takes some time and creativity. If you’re doing it on your own, have some patience and be prepared to search diligently. Otherwise. you’ll risk overlooking an important piece of information regarding your right to own your brand. Consult the USPTO’s website for additional guidance.
And of course, if you would prefer to hand something like this over to a professional, MZA Legal is here to help.