How to Search for a Trademark Before You File

The USPTO will not check whether your mark is available before you file, and it will not refund the filing fee when the examining attorney cites an earlier registration against you. Knowing how to search for a trademark yourself is the cheapest insurance against that outcome, and it is also the first thing our trademark search and clearance team does before any written opinion. A self-search will not find everything. It will eliminate the obvious conflicts and tell you whether a name is worth the cost of a full search.

Step 1: How to search for a trademark in the USPTO database

Start with the USPTO’s trademark search system, which covers every live and dead federal application and registration. Search the exact mark first, then each word in it. Look at the goods and services on each hit, not just the mark, because the question is always whether consumers would expect related goods under similar names to come from the same source. A hit in an unrelated field may not matter; a hit in a neighboring field usually does.

Note the status of each record. Live marks are the ones an examiner can cite. Dead marks cannot be cited, but as our post on using a dead trademark explains, the owner may still be using the name and may still have common-law rights.

If your mark includes a logo, search the design as well. The USPTO assigns design search codes to every pictorial element, and two logos can conflict even when the words differ.

Step 2: Search sound-alikes, spellings and translations

Likelihood of confusion is judged by sight, sound and meaning, so an exact-match search catches only a fraction of real conflicts. Search phonetic equivalents (Kwik and Quick), common misspellings, singular and plural forms, hyphenated and run-together versions, and the mark with and without numbers or letters. Search the dominant word of a compound mark on its own.

Then translate. Under the doctrine of foreign equivalents, a mark in a modern language that a meaningful share of U.S. consumers would understand is compared to its English translation. A Turkish or Spanish word may collide with an English mark that means the same thing, and vice versa.

Step 3: Look beyond the federal register

Federal registration is not the source of trademark rights in the United States; use is. A business that has sold under a name for years without filing anything can block your application through an opposition and can sue you under common law. Those businesses do not appear in the USPTO database.

Search state trademark registers, which many states make available through the Secretary of State. Search business entity names in the states where you operate and where competitors cluster. Search domain registrations, app stores, major marketplaces, social media handles and industry directories. Run ordinary web searches on the mark with the product category and with the word “reviews.” The company that forces a rebrand is often a small one with real customers and no lawyer.

Step 4: Read the results the way an examiner would

A list of hits is not an answer. For each one, ask the questions the USPTO asks: how similar are the marks in appearance, sound and commercial impression, how related are the goods and services, do they travel through the same trade channels to the same buyers, and how strong is the earlier mark? Our post on how likelihood of confusion is decided walks through those factors. Identical goods are not required. A shared dominant word on complementary products is often enough for a refusal.

Also ask whether your mark can be registered at all. If the search turns up many businesses using the same term descriptively, the problem may not be a conflict but a weak mark that the USPTO will refuse as merely descriptive.

Where a self-search stops and clearance begins

A self-search is reliable at one thing: ruling names out. If the exact mark is registered for the same goods, move on. The search is unreliable at ruling names in, because the sources are scattered, the variants are endless and the judgment about what a hit means is legal rather than mechanical. That is the difference between a knockout search and a comprehensive one, which our post on knockout versus comprehensive trademark searches explains.

Before you spend on branding or file through a trademark registration practice, the names that survive your own search should go through a comprehensive search and a written availability opinion. The opinion documents what was found, how an examining attorney is likely to treat it and what to do about it. It is also the record you will want if a dispute arises and the other side asks whether you adopted the name in good faith. The full set of trademark services, from search to enforcement, is described on our trademark law page.

If your own search turned up something you are not sure how to read, a consultation with Capitol Law Partners can tell you whether the name is worth pursuing. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our trademark search and clearance page or schedule a consultation.