How Do I Know if My Business Name or Logo Is Already Trademarked?
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Oftentimes, the first step in starting a new business is coming up with a name. Not just any name, but a name that uniquely identifies your business. If that name is already someone else’s trademark, that could have serious consequences for you and your business. Not only could consumers get confused and fail to find you, but you could also find yourself on the receiving end of a trademark infringement action. So, how do you avoid this? The short answer is to conduct a trademark search.
Types of Trademark Searches
There are several different kinds of trademark searches, but the two most common are “knockout searches” and “comprehensive searches.” Knockout searches are basic reviews, usually limited to United States Patent and Trademark Office (USPTO) records. Comprehensive searches go much further, covering USPTO records, state-level databases, common law uses, domain names, and international trademark records.
The kind of search you choose should be tailored to the specifics of your brand and business. This tailoring should keep in mind the type of trademark you hope to protect (whether it’s generic, descriptive, suggestive, arbitrary or fanciful – for more on this see my earlier blog post, What’s the Difference Between a Trademark, a Copyright, and a Patent?), the industry that you will be doing business in generally, and the likelihood of confusion factors.
Why a Simple Search May Not Be Enough
In today’s world of nearly limitless access to information, anyone can find the TESS database on the USPTO website and run a basic search, and it does not take much to Google a name to see who else may be using similar terms. But information without context can be misleading. That context comes from understanding how courts actually evaluate trademark conflicts.
The USPTO uses the thirteen factor “du Pont Test,” established in 1973 in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The factors include:
- Similarity of appearance, sound, connotation, and overall commercial impression of the marks.
- Similarity of the goods or services.
- Similarity of trade channels.
- Whether purchases are impulse or careful and sophisticated.
- Fame of the prior mark.
- Extent of third party use.
- Extent of any actual confusion.
- Extent of concurrent use without actual confusion.
- The variety of goods on which a mark is or is not used.
- Market interface between applicant and owner of a prior mark, including consent agreements or prior settlements.
- Extent to which the applicant has a right to exclude others from using its mark.
- Extent of potential confusion, whether minimal or substantial.
- Any other fact probative of the effect of use.
Where That Leaves You
At a practical level, this leaves business owners with two important steps. First, you should do some of your own homework. Make a short list of three or four names you would consider, run basic searches, and eliminate any names that raise obvious concerns. Then, once you have narrowed your list, contact an experienced trademark attorney. An attorney can conduct a comprehensive search, apply the du Pont factors to your situation, and prepare an opinion letter that either clears your preferred name or warns you of potential risks.
Final Thoughts
Choosing the right name or logo is more than a creative decision. It is a legal one. A proper trademark search protects your investment, helps avoid disputes, and positions your business for long term growth.
To ensure your brand is fully protected, contact Jimerson Birr. Our attorneys can help you conduct a thorough search, evaluate risk, and secure trademark rights that strengthen your business.