Clearly, a good trademark is one that is not already used by another company. The basic test used by the USPTO when determining whether a mark can be registered and by the courts when determining infringement is whether there is a likelihood of confusion between the two marks. The USPTO will find a likelihood of confusion “when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.” This is evaluated using the sight, sound, and meaning of the two trademarks.
Before dedicating resources to marketing a specific trademark or attempting to register it, it is prudent to make sure that there is no likelihood of confusion with existing trademarks. Potential trademarks should always at the very least be searched on the Internet and the USPTO database.
Even if these searches do not disclose any obvious conflicts, there still might be obstacles to the use of the trademark. Unless you use the USPTO’s complex search protocol, the search will only return direct hits. This means that if you just type in a proposed trademark like you would in Google, trademarks that sound the same but are spelled differently will not show up in your search. It is possible to get around this, but it requires learning the USPTO’s insane search protocol that has not change since the ’90’s. So for the amateur, the USPTO database is great for direct-hit searching, but not good for much else. There are similar limitations with a Google search.
For these reasons, these searches are only used to eliminate trademarks that are clearly unavailable. To know whether a trademark is available for registration, you should hire a lawyer to do a professional trademark search for any confusingly similar pending and registered federal trademarks. These searches range in price depending on the source of the search and how many sources the search looks at to determine infringement. Luckily, technology is really helping to bring down prices. We use a service called TrademarkNow to perform most of our searches. TrademarkNow’s technology allows us to balance price and depth of search to provide a very comprehensive search with some unique bells and whistles for a very low cost.
We’ll talk about the different types of searches in more depth and provide a tutorial on how to perform a free USPTO search in the next few articles.