You’ve developed a brand name and logo that you’re proud of, and you want to make sure no one else uses it on similar products or services. It’s time to trademark your brand identity!
In other words, you want to protect your brand and products from confusion in the marketplace with trademarks. That brand name and corresponding logo will become valuable over time, and you want the exclusive rights to use them in commerce.
What Do You Do First?
If you’re like most small businesses and startups (and even many large businesses), you probably have little or no budget put aside for trademarking. However, not properly securing your trademarks could be disastrous for your business down the road.
Trademarks are an area of your business that you should consider as an inherent cost of doing business.
Trademarks can give you a competitive advantage that lead to higher sales, more investors, and increased profits. You should protect them to the fullest extent allowed by the law.
What is the Problem with a Preliminary Trademark Search?
For most businesses, the problem isn’t applying for a trademark. Instead, the problem is two-fold—picking a strong mark (learn more about this in the Spectrum of Trademark Distinctiveness Infographic) and doing a thorough search to ensure there are no conflicts with the elements you want to trademark.
Yes, you can visit the U.S. Patent and Trademark Office (USPTO) website and conduct an electronic search of trademarks (referred to as a preliminary search) to see if there are any obvious conflicts. You can also Google your mark (if it’s text-based) to see if any obvious conflicts arise.
However, that’s not enough. In fact, it’s not even close to enough to ensure your mark is clear and protectable because trademark rights arise from commercial use. That means an unregistered mark can cause you just as many problems, and that’s why a trademark search beyond the U.S. Patent and Trademark Office is so important.
Even trademark and legal document providers like LegalZoom don’t conduct a comprehensive trademark search, nor do they advise you on the potential strength or weakness of your chosen marks. Do-it-yourself and trademark service providers only conduct preliminary trademark searches. That means you’re accepting a lot of unnecessary risk by securing trademarks at rock-bottom prices.
Bottom-line, you get what you pay for. You can’t depend on the results of a preliminary trademark search, because they only tell you if there are obvious conflicts with your mark. That doesn’t mean there are no conflicts.
What Does a Comprehensive Search Include?
With that said, let’s take a closer look at what a comprehensive trademark search includes so you can tell the difference.
A comprehensive trademark search conducted by an intellectual property attorney, not a general business attorney (you wouldn’t go to a general practitioner for your cardiology needs, would you?), includes:
1. Federal Registration Search
- Most current data
- Expansive search methods
- Both active and inactive records
- All relevant business classes (not just the class your application is for)
- No potential conflict from indirect sources
2. State Registration Search
- Multiple databases
3. Common Law (Unregistered Trademark) Search
- Marks that are not included in the USPTO’s electronic search database
- Marks located in both web-based and traditional sources (e.g., trade journals, industry publications, and so on)
4. Domain Names
- Traditional domains (e.g., .com, .net, .org, etc.)
- Social media usernames and profile URLs can also be searched
After the comprehensive search is completed, an intellectual property attorney will provide their legal opinion related to the risks associated with the mark. This way, you can avoid the time, money, frustration, and possible heartache that could come in the future if:
- Your trademark application is not approved or
- If you start to use the mark only to receive a cease and desist letter from another entity in the future that says they own the trademark and directs you to stop using it.
Just as you wouldn’t leave the door to your store or office unlocked so anyone could come in and steal your tangible property, don’t let people steal your intangible intellectual property. Instead, protect your intellectual property and your business by securing your trademarks.
However, only secure those trademarks after a comprehensive search has been conducted and you fully understand any risks associated with them.