The Dos and Don’ts of Running a USPTO TM Search

You have created a new product or service with a great name, logo design, or catchphrase. To protect your product and business reputations and ensure no one else will be able to use your name or design, you need to register your trademark. Before you start working on your application for the United States Patent and Trademark Office (USPTO) you need to perform a trademark search, also known as a TM search.

If you file for a trademark based upon a name or logo that has already been registered, your application will be denied. So, it is important to run a USPTO TM search before filing your application. Performing a USPTO trademark search is free, however, the rules governing acceptable marks are complicated and can be confusing. To guide your TM search, here are a few tips for how to search trademarks.

The USPTO even has this warning on their search page:

“WARNING: After searching the USPTO database, even if you think the results are “O.K.,” do not assume that your mark can be registered at the USPTO. After you file an application, the USPTO must do its own search and other review and might refuse to register your mark."

Create a USPTO Trademark Search Strategy

Before you jump online to start your trademark search, you should complete several preliminary steps. For example:

• DO: Create and design multiple name combinations, logo graphics, taglines, and other identifying alternatives for your product or service because there is a good chance your proposed mark is already in use. Have several backup options ready to search when you finally access the various search sites.
• DO: Some preliminary homework to determine which possible classes your product or service may fall into so you can tailor your search to the most appropriate categories. Keep in mind that two products may be allowed to use the same mark if they are in distinctly different classes.
• DO: Learn and use the most appropriate terms for your search based upon the information in the Acceptable Identification of Goods & Services Manual, and be sure to review the latest edition of the Nice Agreement for a general understanding of the classes of international goods and services and helpful tips and definitions to improve your search.
• DO: Consult the USPTO Design Search Code Manual to find the relevant design code language you will need to effectively research your graphic design or logo.
• DON’T: Wait until after you file your trademark application to complete your USPTO TM search to determine if your proposed mark is already taken or you will waste time and money starting over with a different mark.

Now that you are familiar with the terms you will need to use in your trademark search, let’s look at how to run a trademark search and the various resources you should access during your TM search.

How To Search Trademarks Online

When you submit a trademark application to the USPTO, the government’s reviewing attorney will perform an official USPTO Gov trademark search based on the information you provide. If the reviewing attorney determines that your proposed mark is the same as another registered mark, or similar enough to another mark to cause a likelihood of confusion, your application will be rejected.

Therefore, it is important to run a search using the USPTO trademark search database tools along with other search options to improve your registration chances. As you learn how to search trademarks, be sure to utilize all these resources for a thorough TM search.

• DO: Start with the official USPTO search engine called the Trademark Electronic Search System (TESS). Beginners can learn how to run a TESS trademark search with the quick tips for using TESS provided by the USPTO. Be sure to use the classes and terms you learned during your preliminary homework as you search.
• DO: Reach out to the Patent and Trademark Resource Centers for assistance during your USPTO TM search for help using search tools to find trademark information.
• DO: Enter your search terms into the Trademark ID Manual Master List to receive a table of trademark ID information.
• DON’T: Limit your search to your specific mark or phrase or a single class of product or service. Search all variations of your proposed mark including plural words, word stems plus extender symbols such as * or ? to search for all possible combinations and wild card versions of your mark. Expand your search to several related product categories to ensure there are no marks similar to yours that could confuse a consumer in the marketplace.
• DO: Use the terms and language you found in the USPTO Design Search Code Manual to check your proposed logo design in addition to searching for plain words.
• DON’T: Limit your TM search to only the databases offered by the USPTO. Some marks have limited legal protection without having USPTO registration so you need to exhaust other search alternatives to ensure your mark is unique.
• DO: Search relevant state-specific databases including Secretary of State offices in the states you plan to market your product or service. If you will be marketing online check for domain name registration at the Internet Corporation for Assigned Names and Numbers (ICANN), and for more general product and company searches turn to SuperPages and be sure to run a good old Google search.

A Thorough, Effective TM Search is Not Easy

Now that you know the basics about how to run a trademark search, you may not want to tackle a USPTO TM search on your own. Here’s one more tip to consider:

• DO: Count on an experienced and knowledgeable trademark attorney to perform a complete TM search on your behalf and help you prepare your trademark application to achieve the best result the first time around.

We understand that registering a trademark for your product or service is an important step to protect your business and no one wants to waste time and money filing an application that will be rejected. The skilled attorneys at Trademark Lawyer Law Firm, PLLC perform methodical and comprehensive trademark searches and provide all of your trademark needs.

We offer high-quality legal services and personalized attention every step of the way. Contact us online or call today at 888-504-0336 to schedule a free 15-minute consultation with a resourceful trademark search attorney.