Trademark Journal

Understanding Trademark Search: A Comprehensive Guide

CATEGORY: Trademark
28 June 2023

Trademark ISG, your trusted partner in the intricate world of trademark law, will guide you on a crucial aspect of the trademarking process— conducting a trademark search. But before diving in, let us clarify what a trademark is. 

A trademark is a word, symbol, slogan, or design that identifies and distinguishes the source of goods or services of one party from other sources. Trademarks have become synonymous with companies’ identities – take the apple with a bite missing for Apple Inc., the swoosh symbol for Nike, or the golden arches for McDonald’s as classic examples.  

How Do You Check if Something Can Be Trademarked? 

Before you proceed with the trademarking process, you must ascertain if your desired mark can be protected by registration. Here is a step-by-step guide to help you with this: 

  1. Understand What Can Be Registered

A trademark should be distinctive and serve as an identifier for your goods or services. It can include the following: 

  • Business names 
  • Brand names 
  • Logos 
  • Slogans 
  • Specific colors associated with a brand 
  • Sounds associated with a brand 
  • Scents associated with a brand (in minimal circumstances) 

However, generic terms, and other terms not associated with a particular source, such as descriptive names, surnames, and geographically descriptive names, will not be eligible for trademark protection. 

  1. Conduct a Preliminary Trademark Search

The first step in checking if something can be registered is conducting a preliminary or ‘knock-out’ search. This search, typically carried out online, can quickly knock out proposed marks that directly conflict with existing registered trademarks. Our proprietary trademark search feature is a great place to start.  

How Do I Check if a Brand Is Registered?  

Should your proposed trademark pass the preliminary search, the next step is to conduct a comprehensive trademark search. This process is more profound and complex, aiming to uncover not just direct conflicts but any potential issues that might prevent your mark’s registration. 

  1. Comprehensive Trademark Search

A comprehensive trademark search investigates registered trademarks and pending applications in federal and state trademark databases, business directories, domain name databases, and more. The process aims to find identical trademarks and similar ones that are being used for similar goods and services and could be deemed “confusingly similar” by the USPTO (United States Patent and Trademark Office). 

Due to the complexities involved, consider hiring a trademark attorney at a firm like Trademark ISG, which has the expertise and resources to conduct a thorough and efficient search. 

  1. Interpreting the Results

Understanding the results of a trademark search is as critical as the search itself. Just because you find a similar mark does not automatically preclude you from registering your mark. 

Interpretation will depend on several factors such as: 

  • The similarity of the marks 
  • Relatedness of goods or services 
  • Strength of the senior user’s mark 
  • Number and nature of similar marks on similar goods 
  • Evidence of actual confusion 

A trademark lawyer can provide valuable insight and advice based on the search results, guiding your next steps. 


What Are Trademark Examples? 

Trademarks are all around us. They shape our perceptions of brands and their offerings. Here are some examples of types of trademarks:

  1. Word Marks: These trademarks are comprised of text only, without any design element. Examples include “Google,” “Microsoft,” and “Coca-Cola.” 
  2. Logo Marks: These are symbols, designs, or stylized text associated with a brand. Examples include the bitten apple for Apple Inc. or the swoosh symbol for Nike. 
  3. Slogan Marks: These are distinctive phrases associated with a brand. Examples include Nike’s “Just Do It” or McDonald’s “I’m Lovin’ It.” 
  4. Sound Marks: These are unique sounds associated with a brand. Examples include the MGM lion roar or the NBC chimes. 
  5. Color Marks: These are specific colors that have come to be associated with a brand. Examples include the Tiffany blue box, or the magenta color used by T-Mobile. 

The Importance of a Trademark Search 

Conducting a trademark search is an essential step in the trademark registration process. A thorough search can help prevent future legal disputes because of trademark infringement. It prevents another business from using the trademark you are attempting to register within the same or similar industry. Ignoring this step could result in costly legal fees and a potential rebranding if another company has prior rights to a similar mark. 

 Potential Outcomes and Next Steps After a Trademark Search 

After conducting a trademark search, there are three potential outcomes:

  1. Clear Trademark: If your proposed trademark appears unique and no other businesses use a similar mark within your industry, you can proceed with the trademark application process. 
  2. Potential Conflicts: If similar trademarks are in your industry, but the likelihood of confusion is debatable, your trademark attorneycan provide insight into whether proceeding with your application is advisable. 
  3. Trademark Already in Use: If another business in your industry uses an identical or remarkably similar trademark, it is advisable to consider an alternative mark to avoid potential legal disputes. 


Common Mistakes in Conducting Trademark Searches 

While conducting a trademark search might seem straightforward, there are common pitfalls that businesses often fall into:

  1. Neglecting Comprehensive Search: A simple Google search or a quick search on the USPTO database is not sufficient. Businesses often neglect to conduct a comprehensive search that includes state trademark databases, web domains, social media, business directories, and more. 
  2. Ignoring Similar Marks: Trademark law does not just protect against identical marks but also “confusingly similar” marks. Therefore, ignoring marks that are similar in sound, appearance, or meaning can lead to legal disputes. 
  3. Overlooking International Trademarks: If you plan to do business internationally, you must search international databases to avoid trademark issues in other countries. 
  4. Misinterpreting Search Results: Interpreting trademark search results can be complex and requires legal expertise. Businesses must be more accurate to correct results, leading to better decision-making. 
Case Studies of Trademark Conflicts 

To further illustrate the importance of a trademark search, let us look at some real-world examples of trademark conflicts:

  1. Apple Inc. vs. Apple Corps: In a famous case from the 1970s, The Beatles’ company, Apple Corps, sued Apple Computer (now Apple Inc.) for trademark infringement. The case highlighted the potential for confusion, even when companies operate in distinct industries. 
  2. Adidas vs. Payless Shoes: Adidas took Payless Shoes to court over a dispute concerning the similarity between Adidas’s three-stripe mark and a two-stripe mark used by Payless. The court ruled in favor of Adidas, reinforcing the potential legal pitfalls of “confusingly similar” marks.
The Role of a Trademark Attorney in the Trademark Search Process 

Navigating the intricacies of trademark law can be complex. This is where the expertise of a trademark attorney becomes invaluable: 

  1. Conducting a Thorough Search: A trademark attorney has the knowledge and resources to conduct a comprehensive search, ensuring no stone is left unturned. 
  2. Interpreting Search Results: A seasoned attorney can skillfully interpret the results of a trademark search, identifying potential hurdles and opportunities. 
  3. Preparing the Application: A trademark attorney can help prepare a strong application, increasing your chances of approval by the USPTO. 
  4. Addressing Office Actions: If the USPTO identifies any issues with your application, your attorney can respond accurately and in a timely manner, helping to keep your application on track. 
  5. Representing You in Oppositions: If someone opposes your trademark registration application, your attorney can represent you in the opposition proceedings. 

A trademark search is an essential step in the trademark registration process. It provides the insight needed to avoid potential legal issues and provides a foundation for building a unique and protected brand. For assistance with your trademark search and other trademark services, do not hesitate to contact us at Trademark ISG; we offer attorney-assisted trademark registration services for a seamless experience.  


By Suman Naresh

Suman is a graduate of Cambridge University and a member of the English Bar, and a former law professor at Cambridge, the University of Chicago, and Tulane University Law School in New Orleans. He has practiced, lectured, and published in the field of intellectual property for more than forty years. He is the CEO of Trademark ISG, LLC, which provides assistance and intellectual property support services to Joseph Root and Verena Benker.

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