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Starting a New Business?...Developing a New Trademark? 

Use a Trademark Search to Confirm That Your Proposed Trademark Is Available for Use and Registration

There are many reasons to secure federal registration of your trademark. Federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This contrasts greatly with the limited geographic range of state registered and common law trademarks.

The benefits of federal trademark registrations include:

  • The incontestable status that a mark can achieve after five years of registration, which eliminates most arguments about your exclusive right to use the mark;
  • The right to use the ® symbol in connection with the mark, which may deter potential infringers;
  • Increased visibility to in trademark searches, which may prevent the adoption of confusingly similar marks by others;
  • The right to sue for infringement in federal courts;
  • The ability to recover profits, damages and costs for infringement, including receiving multiple damages in extraordinary cases;
  • The ability to recover attorneys' fees; and
  • The ability to have the customs service block the importation of goods bearing an infringing mark.

However, before using a trademark in commerce, it is important to confirm that no other individuals and/or companies are already using the mark. You certainly do not want to spend time and money developing on a trademark, slogan or brand, only to find that someone else has pre-existing rights to the same, or to a confusingly similar mark.

A trademark search provides you with a great deal of information regarding third party uses of marks that are similar to your proposed trademark. 

When reviewing a trademark search, attorneys take into consideration a number of factors to determine whether the proposed trademark is "infringing" or "likely to be confused" with another trademark. IThe Ninth Circuit (California's Federal Appeals Court) has listed eight factors that must be considered in analyzing the likelihood of confusion: (1) the similarity of the marks; (2) the relatedness of the two companies' services; (3) the marketing channels used; (4) the strength of plaintiff’s mark; (5) defendant’s intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by the purchasers. See, AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). The factors are generally similar across the country.

It is important to understand that a trademark search will provide you with a definitive answer about your proposed trademark. It does, however, give you information regarding potential risks associated with adoption of the mark.  If the search shows that your exact trademark (or one very similar to it) is already in use by another entity for similar products or services, you will have gotten excellent value from the search. 

Because many businesses never register their trademarks in the United States Patent and Trademark Office (USPTO), it is important that our full search covers other sources including state and county records, internet registrations, and trade directories.

After you apply to register your trademark in the USPTO, your mark will appear when third parties undertake a search for their own proposed  trademarks. This will put them on notice of your claim, and is likely to persuade them to find another mark to use.