How to Check a Trademark Name in the U.S.: A Comprehensive Guide

This comprehensive guide will walk you through the process of checking a trademark name in the United States, whether through the USPTO database, common law marks, trademark use in online platforms and International trademark databases, all of which can help you avoid legal disputes and establish a unique identity for your business.

Understanding Trademarks

Before diving into the search process, it's essential to understand what a trademark is. A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights, and in the U.S., they can be words, phrases, symbols, designs, or a combination of these, used to identify and distinguish goods or services. They can be protected through Registration with the USPTO, or by common-law protection through use alone.

Why Check for Trademark Availability?

Checking for trademark availability is vital for several reasons:

• Avoid Legal Issues: Ensuring your proposed trademark isn’t already in use helps avoid potential legal conflicts with trademark owners. Prior (senior) trademark owners can prevent you from using a trademark, and forcing a brand change.
• Brand Identity: A unique trademark strengthens your brand identity and helps prevent confusion in the marketplace. Consumers will be able to unambiguously find your goods or services, and recommend them to others.
• Save Resources: Discovering early that a trademark is unavailable can save you from investing in marketing and branding efforts that you might have to change later. It's much harder to change a name once it's on packaging and in use.

Step-by-Step Guide to Checking a Trademark Name in the U.S.

Step 1: Brainstorm and List Potential Trademarks Begin by brainstorming potential names for your product or service. Create a broad list of possibilities that reflect your brand’s message and values.

Step 2: Conduct an Initial Search Start with a basic search for your proposed trademarks:

• Internet Search: Use search engines to look for businesses using your proposed name. This can provide immediate insights into any prominent uses.
• Domain Search: Check if the corresponding domain names are available. This can be done through any major domain registration service, like NameCheap.
• Social Media Search: Search on social media platforms like Insta to see if the trademark is being used informally.

Step 3: Use the USPTO’s TESS Database The primary tool for a thorough trademark search is the United States Patent and Trademark Office’s (USPTO) Trademark Search. Here’s how to use it:

• Access TMSEARCH: Visit the USPTO’s website and locate the TMSEARCH search tool.
• Basic Word Mark Search: Start with a simple search of your proposed trademarks. Enter the names into the search field and review any matches.
• Add Class or Goods/Services: For more detailed searching, use the "Refine search by goods or services" field. Remember that only marks with similar goods/services may be considered confusing with yours.
• Learn from Others: Look at the histories of similar marks to yours to see what objections they faced - for example is a word descriptive and may require a disclaimer, or is a name protected by a regional appellation?

Step 4: Analyze the Search Results Understanding the results is crucial. Look for:

• Exact Matches: Identical names already registered or pending as prior applications
• Similar Marks: Marks that are not identical but similar enough to cause confusion, depending on the closeness of the goods/services class or the channels of trade.
• Related Goods and Services: Marks that are registered under different goods or services but could be considered related to your business. If the goods/services are unrelated, you are probably OK. Some categories match across classes, like clothing, skin care and retail services (since apparel companies also sell skin care at their retail locations.)
• Large, Aggressive Competitors: Large companies often challenge trademarks that share the name even though the goods have little relation. For example, MONSTER Beverages challenges practically every "monster" mark.

Step 5: Evaluate the Likelihood of Confusion The key criterion for trademark infringement is the "likelihood of confusion." Consider:

• Similarity in Appearance, Sound, and Meaning: Are the marks similar enough in these aspects that a consumer might be confused? What are the abbreviations that consumers use?
• Commercial Impression: Does the overall commercial impression of the marks conflict? Are the connotations different? Does one trademark have a double meaning that the other lacks, that could be a differentiator?
• Translation and meaning in other languages: Are there translations in other countries that have a similar meaning or do they point to different impressions?
• Channels of Trade and Purchaser Care: Are the goods/services sold in the same channels (sold in the same way, on adjacent store shelves)? Would the typical consumer in this market likely be confused?

Step 6: Consider State and Common Law Trademarks Besides federal registration, trademarks can also be protected under state law and common law (unregistered):

• State Search: Check state trademark databases if you plan to operate in specific states. For example, some of the most important states to search are California trademarks database and Colorado trademarks database.
• Common Law Search: This can be trickier, as it involves looking for unregistered uses in commerce, such as local business directories and other commercial listings.

Step 7: Consider State and Common Law Trademarks Besides federal registration, trademarks can also be protected under state law and common law (unregistered):

• Search Google and other search engines like DuckDuckGo and Bing - often common law usage will appear here, although it may be out of date. Make sure the use is current, since it won't affect you if it's far in past.
• There are individual state trademark databases that you can search.

• Amazon Seller Trademark Usage - if a trademark has been used on Amazon, there may be some common law trademarks to contend with, and it's relatively easy to search.

• Etsy Seller Trademark Usage - like Amazon, Etsy Sellers use trademarks without registering them. If you type the name and products  then you should receive the most relevant results.

Step 9: Consider International Filing Systems like WIPO and country-specific trademark registries:

• WIPO's Global Brand Database covers many of the brand names throughout the world, especially those using treaties like the Madrid Protocol for trademark filing.
• Don't forget about English-speaking countries, which often export to the US once they have some success in their home countries. Canada has the CIPO trademark search database, Australia has IP Australia Trademarks, United Kingdom has the UKIPO Trademark database and New Zealand IPONZ Trademark database.

Step 10: Consult a Trademark Attorney Given the complexity of trademark law and the stakes involved, consulting with a trademark attorney can provide valuable insights and legal advice. An attorney can help navigate the nuances of trademark registration, including the potential for confusion and the broader strategic considerations of brand protection.

Checking a trademark name in the U.S. is a detailed process that involves several steps and careful consideration. By thoroughly researching potential trademarks using the tools and methods described above, you can minimize the risk of legal challenges and establish a strong, defensible brand identity. Whether you’re a new entrepreneur or looking to expand an existing brand, investing time in a comprehensive trademark search is crucial to your success in the competitive business landscape.