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A common mistake that is often made when starting a business is not doing a trademark search before selecting a name. By not verifying the business name is available, you risk legal issues due to infringing on someone else’s name.
The United States Patent and Trademark Office (USPTO) is a federal agency within the U.S. Department of Commerce. This agency exists to protect the owners of intellectual property by registering trademarks and copyrights in addition to issuing patents.
What is a Trademark?
Trademark law provides a way for a business to keep competitors from copying the unique words, logos, symbols, designs and even colors a business uses to describe their products or services.
How is a trademark different from a copyright and patent?
Copyrights and patents are also registered with the USPTO, however they protect different elements in intellectual property.
Copyrights protect authors and artists from others profiting from written works such as books, movies, songs, software, and more. Learn more about copyrights.
Patents protect inventors from having their work used without their consent. Learn more about patents.
What is a Trademark Search?
A basic trademark search can be done at the USPTO site and is a great start in finding out whether the business name you want is available.
We say it’s a great start, because it’s no guarantee that the trademark is free to use. Even the US Patent Trademark Office (USPTO) warns that you may not be able to register a trademark even if the search shows it is clear.
“Warning: After searching the USPTO database, even if you think the results are “o.k.,” do not assume that your mark can be registered. After you file an application, the USPTO will perform its own search and other review, and might refuse to register your mark.”
The main reason for this warning is that even though the name you entered may show up as available in the USPTO database, a trademark examiner will evaluate whether their is already a similar name being used and the trademark registration could create a “likelihood of confusion” in the marketplace. This means you may not get a trademark even though an exact match isn’t yet registered.
While it’s best to have a legal professional to do the trademark search and register it, there are a lot of expenses when starting a business and the funds may not be in the budget. At the minimum, doing a preliminary trademark search is a fast and easy way to narrow down the list of names to ones that aren’t being used by another business. Doing this search now may save you a lot of time, expense and frustration should your business name infringe on an existing mark.
Besides the trademark search, you may also want to do an online search to see if there is someone else that may be using a name similar to yours. There is a certain amount of protection called a “common law trademark” that we will talk about later that could create challenges down the road.
Visit USPTO.gov to do a trademark search. Click to jump to the end of the page to see the step-by-step process of searching for a trademark.
What can be trademarked?
Really anything that can be represented graphically can be trademarked such as logos, words like brand names or slogans, sounds, shapes and colors.
What can’t be trademarked?
While the list of what can be trademarked is large, there are a few limitations to what can be protected.
- Generic Terms such as a business name with the words “Lawn Care” in it. (you can trademark unique words before and/or after “Lawn Care”)
- Descriptive Terms like the word “Fresh” in your restaurant name.
- Words that refer to the geographic origin of the product being sold.
- Misspellings of trademarked names.
- Trademarks also can’t be misleading, deceptive, or use disparaging words.
What is a common law trademark?
A common law trademark is created when someone simply uses a business name or logo in commerce. Like a trademark registered with USPTO, a common law trademark provides limited trademark rights to a company name, logo, words, shapes, etc. This protection is free to the business owner as there is nothing to file.
The common law trademark happens automatically just by using it in commerce and there is no cost or filing. Using the symbol TM shows you are protecting the mark. This is easy and most business owners should do it, however know that the protection is limited.
Why not just use the free common law trademark instead of registering one?
For starters, common law trademarks are limited to the geographic area where it is being used while a trademark registered with USPTO has nationwide protection. Even worse, someone could register a federal trademark and surround the geographic area of an owner with a common law trademark to prevent them from expanding their business.
Secondly, registering a trademark makes it easier to prove rights of ownership should someone claim they have rights to the name. A USPTO registered trademark will discourage others from using it (called “constructive notice”).
Registering a trademark can also be helpful in disputes others using domain names related to the mark.
A trademark is also useful as it can be filed with the U.S. Customs and Border Protection Agency to stop counterfeit goods from entering the country.
How long is a trademark valid?
Registered trademarks are good forever, provided the mark is used in commerce and the registration fees and the trademark application is current.
How much does it cost to file a trademark?
The cost to file a trademark application with the U.S. Patent and Trademark Office is between $225 – $400 per class, depending on how the trademark is filed. See more information about trademark costs.
For each additional class of goods or services, there are additional filing fees to the Trademark Office. For example, if you’re using the mark on t-shirts (class 25) and mugs (class 21), or perhaps for custom printing services for t-shirts (class 42), each class of goods requires a separate filing fee. The same is true when you renew the registration.
There are 45 different trademark classes (34 for goods and 11 for services) that cover all goods and services and to properly protect the products or services of your business, you may need to cover multiple classes. Check out the list of trademark classes from the USPTO and enter the keywords that best represent the goods and/or services you want to protect in the search field.
How do I use the symbols to represent trademark protection?
There are a few symbols that are used to identify protected trademarks. Using these symbols is a must in order give notice you intend to reserve those rights.
® – A trademark registered with the USPTO will use the symbol with an R inside a circle. This symbol can’t be used until the mark is approved.
TM – Used when the mark’s owner is claims the exclusive use of the trademark. Often used while waiting for approval from USPTO, however it is legal to use the TM symbol for a common law mark. Just keep in mind that there is little protection with this mark.
SM – A less common mark, the Service Mark, is the service equivalent of the unregistered trademark.
There aren’t any specific rules when it comes to where the symbols are placed. Typically the marks will be found in either the upper right-hand corner or lower right-hand corner.
How to do a Trademark Search to see if your Name is Available
- Visit the USPTO Trademark Database.
- Select “Basic Word Mark Search”
- Enter the business name you would like to search for.
In this example we will search for “Monkey Business”, a company providing business consulting. Remember, you will want to file a trademark for each class that the business operates in. A company like this would operate in International Class 35 “Advertising, business management, business administration, office functions”. See the list of International Classes
- Review the Results
The first thing to look for is whether there is a “Live” with the same name or a name that is very similar to the one you are looking for. Let’s start on listing #2 since it is the first live listing.
- Looking at the first result, we want to check which classification the trademark belong to. This listing is IC (for International Class) 016 (Paper goods and printed matter) and 021 (Housewares and glass). The listing description for IC016) further explains “Stationery, namely, office stationery, paper memo holders, stationery holders, pens, pencil sharpeners, memorandum boards.” IC 021 says “Household or kitchen utensils and containers, namely, pot stands, bowls,…”These trademarks do not protect the class we want to apply for which is business services (IC 035), but since there are many more listings, we will want to search them all.
- Going down to number 47, we see a “Dead” listing for Monkey Business, a franchising service that provides technical assistance in the establishment and operation of retail stores. It was registered for our target classification IC 035. Since it is a dead listing, that has been cancelled more than 3 years ago, there is a pretty good chance of being able to register it.Had this search been “Live” and you were wanting to start a consulting business in an entirely different industry, you would not be able to register this business name.
- One other result may come back which look like:
This means there are no businesses that were found with the words you entered. This is a good sign, but try some different spellings and maybe shorten the number of words being searched for to be sure.
This was a quick example of how to do a trademark search to see if the business name you want is available. There is no substitute to having a trademark professional such as LegalZoom assist with the filing to make sure it is filed properly, especially if there are several results that are similar.