Trademark Search: How to Clear a Brand Before Filing

Before investing in a new business name, product name, logo, or slogan, it is important to determine whether another party may already have conflicting trademark rights.

A trademark search, also called a trademark clearance search, can help identify potential conflicts before a business invests in packaging, advertising, inventory, websites, product listings, or a federal trademark application.

However, an effective trademark search involves more than looking for an exact match in the United States Patent and Trademark Office (USPTO) database. Trademark conflicts can involve marks that look different but are similar in sound, meaning, appearance, or overall commercial impression. Existing rights may also arise from businesses that use a trademark without owning a federal registration.

For entrepreneurs, small businesses, e-commerce sellers, and established companies developing new brands, a comprehensive trademark search can help answer an important question before filing an application: Is this a brand that the business can reasonably move forward with?

What Is a Trademark Search?

A trademark search is an investigation into existing trademarks and marketplace uses that could conflict with a proposed trademark.

The USPTO recommends conducting a comprehensive clearance search before applying for federal trademark registration. A comprehensive search may include federal trademark applications and registrations, state trademark databases, business records, domain names, internet searches, and other sources that may reveal existing trademark use.

You can review the USPTO's guidance on conducting a comprehensive trademark clearance search.

A trademark search should therefore do more than determine whether someone has registered the exact same name. The search should identify potentially similar marks and evaluate whether those marks are associated with goods or services that could create a conflict.

Why Should You Search a Trademark Before Filing?

Conducting a trademark search before filing can help a business identify potential legal and commercial problems while there is still time to adjust its branding strategy.

One of the most common reasons the USPTO refuses trademark registration is a likelihood of confusion with an existing trademark. According to the USPTO, likelihood of confusion generally depends on the similarity between the trademarks and the relationship between the associated goods or services.

The trademarks do not have to be identical.

For example, two names with different spellings could still create a potential conflict if consumers would pronounce them similarly. Two businesses also do not necessarily have to sell identical products. Related goods or services may create a likelihood of confusion if consumers could mistakenly believe that they come from the same source.

The USPTO provides additional information about its analysis of likelihood of confusion.

Finding a potential conflict before filing gives the business an opportunity to investigate the issue, modify its branding, choose another trademark, or develop a filing strategy that accounts for the identified risk.

Is Searching the USPTO Trademark Database Enough?

The USPTO database is an essential part of a trademark search, but searching the federal database alone may not identify every relevant trademark.

Businesses can acquire certain trademark rights through use of a mark in commerce even when they have not obtained a federal registration. These are generally referred to as common law trademark rights.

For this reason, the USPTO recommends searching beyond federal trademark applications and registrations.

A comprehensive search may include state trademark databases, business records, websites, search engines, domain names, social media accounts, online marketplaces, industry directories, and other sources showing commercial use of a name or brand.

A search that does not reveal a conflicting federal registration should therefore not automatically be interpreted to mean that the proposed trademark is available for use or registration.

Common law rights can become particularly important when another business has already been operating under a similar name. Businesses interested in this issue can also review our discussion of common law trademark rights.

How Do You Search the USPTO Trademark Database?

The USPTO provides a public Trademark Search system that allows users to search pending federal applications and existing registrations.

An initial search can begin with the exact wording of the proposed trademark. However, an exact-match search should generally be the beginning of the process rather than the end.

A more comprehensive federal search should consider similar spellings, phonetic equivalents, alternative word arrangements, related wording, similar meanings, and other variations that could produce a similar commercial impression.

For example, discovering that no one has registered the exact wording of a proposed trademark does not necessarily mean that the USPTO will approve an application. A differently spelled mark may still be relevant if consumers are likely to perceive the two marks as substantially similar.

Marks containing logos or design elements may require additional searching for similar visual elements.

The USPTO provides additional instructions for conducting a federal trademark search.

What Does a Comprehensive Trademark Clearance Search Include?

The appropriate scope of a trademark search depends on the proposed mark, the relevant industry, the goods or services associated with the mark, and where the business intends to operate.

A comprehensive trademark clearance search may examine federal trademark applications and registrations, state trademark records, business registrations, websites, search engines, domain names, social media, online marketplaces, industry sources, and relevant international databases when appropriate.

The search should also examine trademarks that are similar rather than limiting the investigation to exact matches.

Another important consideration is the relationship between the goods and services associated with the trademarks.

Trademark classes are useful for organizing goods and services within the trademark registration system, but they do not create absolute boundaries for determining whether two marks conflict. Similar trademarks involving goods or services in different classes can still present a problem when those goods or services are sufficiently related.

The ultimate question is whether consumers could mistakenly believe that the goods or services originate from the same source.

Can I Search a Trademark Myself?

Anyone can use the USPTO's public search system, and conducting an initial search can be a useful step for a business owner considering a new brand. If you are still at the naming stage, our guide on whether you can trademark your business name is a useful starting point.

The more difficult part of trademark clearance is often interpreting what the search results mean.

A search may reveal several trademarks that share words, sounds, designs, or other characteristics with a proposed mark. Determining whether those results create a meaningful legal risk can require analyzing the similarities between the marks, the relationship between the goods or services, the commercial impression created by the marks, and the marketplace in which they are used.

A business owner may therefore begin with a preliminary search and then seek a more comprehensive trademark clearance analysis before committing substantial resources to the brand.

What Does a Trademark Attorney Look for During a Clearance Search?

A trademark attorney conducting or reviewing a clearance search is not simply looking for identical registrations.

The analysis may include identifying similar federal applications and registrations, investigating relevant common law use, examining the goods and services associated with potentially conflicting marks, and evaluating how consumers are likely to perceive the proposed trademark.

The attorney can then use those findings to assess the level of risk associated with using or applying to register the mark.

This distinction is important because a trademark search should ultimately help a business make a decision. A long list of search results has limited value if the business does not understand which results matter or how they could affect the proposed brand.

For businesses seeking both trademark clearance and registration assistance, conducting the clearance analysis before preparing the application can also help inform the eventual filing strategy.

When Should a Small Business Conduct a Trademark Search?

A small business should ideally conduct a trademark search before making a substantial investment in a new brand.

For example, a business may benefit from conducting clearance before ordering significant amounts of branded packaging, purchasing inventory, installing signage, developing an extensive website, or investing heavily in advertising.

Conducting a search early can be particularly important when a business is still choosing between potential names. Discovering a serious conflict at that stage may be inconvenient, but it can be considerably less expensive than discovering the conflict after the business has launched.

Registering an LLC, corporation, assumed name, domain name, or social media account also does not necessarily establish that the name is available as a trademark. Our guide on forming an LLC in New York explains the business-formation side of that process.

Business formation and trademark rights involve different legal questions. A state may allow the formation of a company under a particular name even when another party has trademark rights that could affect how the business uses that name commercially.

Should E-Commerce Sellers Conduct a Trademark Search Before Launching a Brand?

Trademark clearance can be especially important for e-commerce businesses because online brands can quickly reach customers across multiple states.

An Amazon seller or other online retailer may invest in inventory, product photography, packaging, advertising, product listings, and other brand assets before discovering that another business claims rights in a similar trademark.

Conducting a trademark search before making those investments can help identify potential problems earlier.

For a private-label seller developing a new brand, the process can begin with selecting a proposed trademark and conducting preliminary and comprehensive searches. If the search results support moving forward, the seller can then determine an appropriate federal filing strategy.

Businesses that intend to pursue programs such as Amazon Brand Registry should similarly consider trademark clearance before treating federal registration as the first step in the branding process.

The goal is not simply to obtain a trademark application. The goal is to build a brand that the business has a reasonable basis to use and protect.

What Happens If a Trademark Search Finds a Similar Mark?

Finding a similar trademark does not automatically mean that a business must abandon its proposed name.

Trademark conflicts depend on the circumstances.

Similar or even identical wording may sometimes coexist when the associated goods or services and marketplace circumstances do not create a likelihood of confusion. Conversely, trademarks that are not identical may still conflict when their similarities and the relationship between their goods or services could cause consumers to believe that they come from the same source.

A business should therefore evaluate the significance of the search result rather than relying solely on whether the marks are identical.

Depending on the circumstances, the business may decide to investigate the existing trademark further, modify its proposed branding, narrow or reconsider its goods and services, proceed with an application despite an identified risk, or select a different trademark.

This is one of the principal reasons that trademark clearance should be treated as an analysis rather than simply a database search.

Does a Trademark Search Guarantee That My Application Will Be Approved?

No trademark search can guarantee that the USPTO will register a proposed trademark.

A clearance search is designed to identify and evaluate potential risks before filing. After an application is submitted, a USPTO examining attorney conducts an independent review of the application and searches for conflicting federal trademarks.

The examining attorney may also identify other substantive or procedural issues with the application.

If the USPTO identifies an issue, it may issue an Office Action explaining the refusal or requirement. The applicant will then have an opportunity to respond within the applicable deadline.

A strong clearance search can reduce uncertainty before filing, but it does not replace the USPTO's examination process.

What Happens After a Trademark Search?

If the clearance search does not identify a conflict that prevents the business from moving forward, the next step may be developing a federal trademark filing strategy.

The filing strategy will depend on the proposed trademark, the goods or services associated with it, how the business is currently using or intends to use the mark, and other circumstances surrounding the application.

The business will also need to determine how its goods or services should be identified and whether the application should cover standard characters, a particular logo or design, or another eligible form of trademark.

These questions are related to trademark clearance, but they represent a separate stage of the trademark process. Our article on how long trademark registration takes covers what to expect after filing.

A business should therefore avoid treating the trademark search as a formality immediately before filing. The information discovered during clearance may determine whether filing the application makes sense at all and, if it does, how the business should approach its filing strategy.

Do I Need a Trademark Attorney for a Trademark Search?

A U.S.-domiciled applicant is not required to hire an attorney to search for a trademark or file a federal trademark application. Foreign-domiciled applicants, registrants, and parties generally must be represented before the USPTO by a U.S.-licensed attorney.

Even when representation is not mandatory, a trademark attorney can assist with interpreting search results and evaluating risks that may not be apparent from an exact-match database search.

An attorney may also help connect the clearance analysis to the business's broader filing strategy. This can be particularly useful for small businesses, e-commerce sellers, and companies that are preparing to make substantial investments in a new brand.

The USPTO provides additional information about why applicants may consider hiring a U.S.-licensed trademark attorney.

Search Before You Invest in a Brand

A business should not wait until after it has invested substantially in a brand to ask whether someone else may have conflicting trademark rights.

A trademark search can help identify federal registrations, pending applications, common law uses, and other potential obstacles before those investments become difficult or expensive to reverse.

More importantly, a comprehensive trademark clearance search provides information that can help a business decide whether to move forward with a proposed brand, modify it, investigate potential conflicts further, or choose another trademark.

Stockman & Poropat, PLLC assists entrepreneurs, small businesses, e-commerce sellers, and established companies with trademark searches, clearance analysis, and federal trademark filing strategies.

If you are developing a new business name, product name, logo, or other brand identifier, contact Stockman & Poropat, PLLC to discuss conducting a trademark search before filing.