Performing a Preliminary TM Clearance Search
The following are some basic steps that non-lawyers can perform to investigate whether a potential company name is already subject to another's trademark rights. Before searching, it is worth noting the following basic principles:
First, while registering a mark with the United States Patent & Trademark Office (or with a state) provides one with certain procedural benefits, one can have trademark rights merely through using a mark as a brand (i.e., to identify the source of goods or services). Therefore, the mere fact that your proposed company name is not a registered trademark does not mean that another party does not have trademark rights in that name through using that mark prior to you.
Second, even if your name is not identical to an existing mark, it may still infringe that trademark if it is similar enough such that consumers are likely to be confused about the source of the goods using the two marks. The question of likelihood of confusion can be complicated and typically involves the weighing of various factors, such as:
- The strength of the plaintiff's mark
- The degree of similarity between the plaintiff's and the defendant's mark
- The proximity of the products or services covered by the marks
- The likelihood that the plaintiff will bridge the gap
- Evidence of actual confusion; defendant's good faith in adopting the mark
- The quality of the defendant's product or service
- The level of consumer sophistication.
However, at the incorporation stage, a detailed analysis of likelihood of confusion under the above factors is typically unnecessary. If there is an existing mark close enough to a proposed company name to cause any question, it is typically better to select a new name with less risk of trademark concerns. It is extremely costly and disruptive to have to change brands once a company has begun to establish brand recognition. It would seldom be worth selecting a company name for which the founders are aware of a risk of trademark concerns.
Here are the steps founders can take to preliminarily confirm there are no obviously trademark concerns for a given company name:
Step 1: Search the United States Patent & Trademark Office:
For any mark returned in the search results, note the following:
- Whether the mark is "live" or "dead"
- The categories of goods/services for which the mark is registered
- The owner of the mark
- Any disclaimers related to the scope of the mark
Consider broadening your search by dropping words from your search term or by checking common misspellings or similar words.
Marify is a free trademark search tool that searches the USPTO database and the CTM database (Europe). It also picks up marks similar, but not identical, to the search term.
Step 3: Basic Google search
To attempt to find common law uses of your name as a trademark, perform basic web searches for the name or common variants.
Step 4: Entity Name Availability Search
Search the relevant state to determine whether the name is available. For example:
Step 5: Domain Name, Twitter Handle, and Facebook Username Search
These serve practical functions because you likely want to have a domain name, twitter handle, and/or facebook username associated with your company name. Even if you have the legal right to use a name, the inability to use that name as a domain name may be reason to select a different name. These searches also provide a legal function in that the absence of a name as a domain name, Twitter handle, or Facebook username is further evidence that others are not using that name as a mark in commerce.
Step 6: Consider Fee-based Search Options or Consulting a Trademark Attorney
Other fee-based services that will offer more comprehensive searches include:
Of course, even these searches will only identify similar marks. They will not perform the legal analysis as to the likelihood of customer confusion exists between the marks.
Moreover, it is impossible for any preliminary search to identify all uses of a mark. An experienced trademark attorney can assist in more fully analyzing the availability of your proposed name.
Step 7: Analyze Search Results
Analyzing the risk of trademark infringement associated with a potential name when you are aware of other similar marks typically requires the assistance of an attorney.