Performing a COMPREHENSIVE TRADEMARK SEARCH is the most important part of the trademark registration process.
While the USPTO database is free for anyone to use, we highly suggest using a comprehensive search engine and working with a licensed attorney. This blog seeks to explain why.
Conducting a complete and comprehensive trademark search of your mark before filing an application is vital to your success. Search results may identify potential problems, like the likelihood of confusion with another registered mark or pending application.
A review of a comprehensive search by a licensed attorney can determine if your mark is generic, descriptive, creates a likelihood of confusion, violates other trademark rules, or would otherwise be denied. Remember: Your government filing fees are not refunded if your application is refused.
Generic & Descriptive Marks
A comprehensive search can save you the expense of applying for a mark that is not likely to be approved. A comprehensive search and legal reviews uncovers whether your mark appears generic or descriptive. Generic and descriptive marks are difficult to protect, are likely result in office actions, and are refused upon review.
Generic trademarks are common terms used to name products or services. For example a brand of hats called “hats” would be generic. These marks do not qualify for trademark protection and will be refused by the USPTO.
Descriptive (sometimes referred to as suggestive) trademarks are words that describe a feature of the products and/or services. Descriptive marks consist of dictionary words (or their phonetic equivalents) and describe characteristics of your product and/or service. You can’t register these types of marks, as the USPTO wants to prevent a business from appropriating common dictionary words describing important characteristics that would place competitors at a significant disadvantage.
Other Reasons for Refusal
The USPTO will also refuse registration of a proposed mark for many other reasons, including if that mark is:
Geographically descriptive of the origin of the goods and/or services
A foreign term that translate to a descriptive or generic term
An individual’s name or likeness
The title of a single book and/or movie
A matter that is used in a purely ornamental manner
The Trademark Office examines every trademark application for compliance with federal law and rules.
Likelihood of Confusion
The most common reasons for the USPTO to refuse a trademark application is due to a “likelihood of confusion” between your mark and a mark already registered or pending application by another party.
The USPTO determines that a likelihood of confusion exists when:
The marks are similar, and
The goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.
It’s important to note that marks are compared in the entirety for similarity in appearance, sound, connotation, and commercial impression. Therefore, before filing your trademark application, it is very important for you to determine whether the mark you have chosen is likely to cause confusion with another mark.
Sounds confusing and subjective, huh? That’s why we suggest a comprehensive search and legal review with a licensed attorney. The USPTO database isn’t going to provide you with this information.
Common Law Rights
Any searches you conduct on TESS are limited to the USPTO’s database of federal trademark applications and registrations and do not include the marks of other parties who may have trademark rights that are not federal registration rights. These rights, known as “common law” rights, are based solely on use of the mark in commerce within a particular geographic area (think: state). Common law rights may be stronger than federal registration in some cases. This may occur when the common law use date is earlier than the date of use supporting your application.
You can check for state trademark filings by performing a search in each individual US state. You can also run a Google search of your name and/or a reverse image search of your logo for other potential common law issues.
If a person or business is already using your name, slogan, and/or logo or something that is similar, you run the risk of violating their rights. Even if you successfully register a federal trademark, your use still may cause legal issues. A comprehensive trademark search and legal review can help you properly evaluate and mitigate these risks.
While using the free USPTO database for choosing a business name is an excellent resource, this search option is not all-inclusive. A comprehensive trademark search, reviewed and evaluated by a licensed attorney, can save you time, money, and prevent unnecessary delays.