How to Search for Trademarks For Your Business:
Using a Trademark Attorneys vs. a Paid Comprehensive Online Trademark Search
Trademark Basics
Before we get started on why you need a trademark attorney to perform a comprehensive trademark search and business name search for you, let’s start with a few trademark basics. A trademark is a type of intellectual property that refers to a symbol, word, or phrase used to differentiate a brand in the marketplace. A trademark search is the action of determining whether or not a particular symbol, work, or phrase is free and clear to be used by a company in commerce, or if the name is already being utilized in commerce by another organization. If the word, name, or symbol you want to use in business is not already a registered trademark or being used in commerce, then you may be able to trademark it yourself and legally protect your new brand name. Now, let’s dive into why all paid comprehensive trademark searches or business name searches may not be good enough.
Why online business name searches aren’t good enough
When deciding to start a business, you have to come up with a business name that will act as the legal identity for your company. This name is what you use on contracts, bank accounts, leases, etc.
Oftentimes when registering a business, new business owners will use a budget-friendly business formation option like LegalZoom to find out if the name they want is available for use in their state. Once the name comes back as “available”, they assume that this business name is free to use as a customer-facing brand name to promote their goods and/or services.
Unfortunately, this isn’t always the case. Budget friendly, non-legal trademark searches merely search the database and don’t take into account the legal analysis that is required. Just because there’s not an exact match doesn’t mean it’s available for you to use.
This is due to the fact that a registered business name isn’t necessarily the one that will be used by a company to promote goods or services. Other businesses may be utilizing your business name in commerce to sell products/services, giving them the rights to that name, even though it is not their registered business name.
It’s also important to keep in mind that each state has its own registered business names, but thanks to the internet, our business presences usually cross state borders and if someone in a different state is using your business name in a consumer-facing manner, that is their trademark and they may have exclusive rights to it even though its available to register your business name in your state.
Paid online business name searches such as those found on LegalZoom don’t take any of this into consideration. For this reason, it’s imperative to consult a trademark attorney early on in the business formation process to ensure that you’re not wasting time and money building a brand that you aren’t actually going to be able to use or protect long-term. Also, if you use a business name that another company is already utilizing in commerce, you may run the risk of trademark infringement which comes with hefty legal fees and it’s likely that this will require you to rebrand your company completely.
Why online “comprehensive” trademark searches aren’t good enough
Comprehensive trademark searches are ordered by trademark attorneys and involve reading reports that are hundreds of pages long and analyzing said reports to see if there are any conflicts with the name that the business owner wants to use. Trademark attorneys take spelling, line of business, and growth plans into consideration when doing their analysis. Generally, due to all of the work involved, a comprehensive trademark search will cost at least $1,000.
So, what’s the difference between a comprehensive trademark search done by a trademark attorney and one done by an online legal document provider like LegalZoom?
Investment
Well, to start, online services such as LegalZoom and MyCorporation offer their services at a much lower cost than an attorney would. And this isn’t because attorneys are greedy! It’s simply because to do a truly comprehensive search it requires doing more than looking for exact name results. Truly comprehensive searches take hours of research and analysis, and it’s not something that can be done thoroughly by a computer. Trademark attorneys use specialized software with advanced tools that can find an infinite amount of alternatives in spelling, pronunciation, etc.
Trademark Search Methods
Anyone can do a quick search of USPTO.gov, state business filings, domain names, and social media profiles to see if a name is available, but the average person and online companies, like LegalZoom or MyCorporation, can’t catch all of the potential trademark conflicts.
As mentioned earlier, unlike online search companies, trademark attorneys take additional factors into consideration that require advanced search parameters such as spelling, line of business or business industry, and future growth plans. They also consider, strength and weakness of the mark and certain components of the marks such as distinctiveness and descriptiveness, as these are factors relevant to whether your trademark might be approved and whether it is sufficiently different from other marks.
First Use Right
Potentially one of the most important reasons that an online comprehensive trademark search isn’t going to give you the information you need is the fact that the United States gives rights to the individual or company that first used a name in commerce, not the person or company that registered the trademark. This means that unless your comprehensive trademark search included a detailed common law search, then your search was not truly a comprehensive search and you could still be exposed to disputes or liabilities down the road. It is very common that people pay for a search believing it is comprehensive and going to give them all the information they need about their proposed trademark, only to end up with a refusal from the Trademark Office, or worse, a legal dispute with another company causing potential legal fees and rebranding later on.
What’s included in a comprehensive trademark search?
Comprehensive trademark searches done by a trademark attorney or intellectual property attorney generally include expansive searches of:
- Domain names
- Social media handles
- Federal records (active and inactive)
- All relevant federal classes of goods/services
- Federal indirect conflicts outside of classes
- Multiple state databases
- Common law conflicts
- Industry publications, journals, other web-based and print sources
Please keep in mind that paid online searches that say they are comprehensive trademark searches may not be, in which case they will not include all items mentioned above. Even a federal and state database search (clearance search) that is done by LegalZoom doesn’t include the full analysis that is needed. It is more cost effective for an attorney to run one of those clearance searches (typically ranges $500-800), but it still requires the legal analysis to be effective. Without the analysis it is worthless.
A thorough comprehensive trademark search requires legal analysis and trademark experience, and should only be completed by a trademark attorney.
Risk versus Reward
We understand that starting a business can be expensive and it can be hard to prioritize what needs to be done, but getting your name cleared and protected before investing more money and time into the brand is one investment that should not be skimped on or put off.
In the end, it’s up to you to determine which type of trademark search you are interested in having done for your brand. You can either invest more now and eliminate your risk of potentially costly legal battles and rebranding in the future or you can choose a less expensive option that doesn’t give you as much protection and may lead to future legal issues that require you to rebrand and lose the goodwill you’ve built for your brand.
If you are in need of a truly comprehensive trademark search, reach out to DiAngelo Law today for assistance.
