Naming Your New Business (The SAFE Way)
So you’re opening a new business--exciting! You’ve spent hours groveling over the perfect business name and have finally made a decision. Before you run off to register your business name and file your articles of incorporation, pause.
Have you checked the USPTO database for potential trademark issues?
A trademark (™) search is one of the most important aspects of starting a new business. The purpose of a trademark search is to find out if the name you have selected is available for use.
Without a proper search, another company may prevent or stop you from using the name you have selected. Using someone else’s registered trademark may:
Create confusion in the marketplace
Cause legal issues for your business
Result in having to rebrand your business
Did you say LEGAL ISSUES?
Yes, I did. When you use someone else’s registered trademark under the same class(es), you risk receiving DMCA Takedown Notices, Cease and Desist Letters, and/or having to pay damages to the trademark owner based on your infringement.
These headaches are not fun for business owners.
The good news is that you may be able to prevent these issues by running a trademark search through the USPTO (for free)!
Anyone (yes, that means you) can search USPTO registered trademarks for free using the USPTO’s Trademark Electronic Search System or TESS.
Here are few tips & tricks for performing free searches:
1. Search for “exact matches” first.
Exact matches are found by using the exact same spelling and formatting of the name or slogan you want to use. Exact matches are relatively easy to spot. Make sure that you check the class before determining that you can't use the name or slogan.
2. Search for “similar” marks.
While it is relatively easy to search for “exact matches”, trademark searches can become complicated when searching for “similar marks”. Marks can be similar without being identical. For example, names may be similar if they look alike or sound alike. The USPTO uses the example of “T.Markey” and “Tee Marquee” to illustrate similar names. When you check trademark status, you should also look for alternate spellings and word endings.
3. Check for “active” and “inactive” marks.
Your TESS search will say whether each registered mark is active or inactive. Active marks are the marks you need to worry about immediately. Inactive marks aren’t currently an issue but could become one if the trademark owner is behind on filing requirements and is able to “recover” their trademark.
4. Don’t panic! Learn more about “classes” and “related classes”.
The chances of exact matches and similar matches popping up on the USPTO database are high. This may be a problem but don’t panic until you learn more about filing under specific classes and what the USPTO considers “coordinated classes”. We have written another blog post specifically about “classes” and “coordinated classes” that you can access here.
5. Don’t assume your free search is perfect.
The USPTO’s Trademark Electronic Search System includes information (with sample search strategies) on how to use the USPTO database. This information can help guide you on making determinations on whether marks may cause a likelihood of confusion, infringement issues, or prevent your own trademark registration. Please note that the USPTO will not search your mark for you. Using their database and guidance documents provides no guarantee that you are not infringing on someone else’s mark or that your own trademark application will be successful.
We highly suggest our trademark clients perform a COMPREHENSIVE search that includes legal guidance on the chance of infringement issues and success of filing. To learn more about the importance of comprehensive searches and legal reviews, click here.
The good news is that trademark issues for new businesses are preventable, whether using the free USPTO database or working with an attorney to perform a comprehensive search!
If you have questions about the trademark process or have found yourself in a sticky situation, feel free to contact us.
Wait! What about logos?
If you plan to include a design or logo in your trademark or use any words that could be represented by an image, a design search code allows you to search for trademarks with similar design elements.
A design search code is a six-digit number that is used to classify and search for the prominent design elements in a trademark. A design element can be any component of the trademark that is not a word. Example: A picture of a bird, star, or flower.
Logos with more abstract design elements are difficult to search, as descriptions are often subjective and cannot always be accurately described. If you are looking to trademark a logo, we suggest working with a licensed attorney in your jurisdiction.