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."
Before you jump online to start your trademark search, you should complete several preliminary steps. For example:
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.
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.
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:
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.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.