Monica Mason authored an Aug. 11, 2017 article for Smart Hustle offering guidance on the important step of ensuring a trademark or service mark is not already in use when using or promoting a new brand in connection with a business or product. Before using a new mark, business leaders should engage a trademark attorney to meticulously search the trademark to clear its use or identify any risks for using or registering the trademark.
At a minimum, the business leader should conduct basic internet searches and scan the Trademark Electronic Search System (TESS), the free search engine located on the United States Patent and Trademark Office’s (USPTO) website. Beyond that, the business should conduct a two-step search:
- Preliminary Search: Review the pending applications and trademarks registered with the USPTO to ensure that there are not already any identical marks.
- Second-level Search: Conduct a more throughout search to determine any further risks associated with the use and registration of the mark, as well as the extent of non-registered, third-party use of the mark. This includes ordering a sophisticated report from a commercial search firm that combines information from multiple sources in order to get a clearer big picture.
Not only will a trademark search help companies not invest in a taken name, but in the event of a legal dispute, the court will look at whether trademark searches were conducted when determining whether the defendant acted in good faith. “While conducting trademark searches is not mandatory under trademark law, the searches can uncover substantial risks of which a business owner would otherwise be unaware, and save the business owner substantial time, money and headaches down the road,” Mason said.
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