Trademark rights are established by using the mark, not solely by registration. This means that somebody could already have rights in a trademark that is similar to a name you are considering for your product line or services. Accordingly, most business owners should do a trademark search before definitively choosing a business name or a name for goods or services. This helps determine whether another business is already using a trademark that is identical to the business, product, or service name you have tentatively selected.
Failure to do a comprehensive trademark search at the beginning of operations is very risky. It can result in a business owner incurring significant printing, advertising, and website costs and spending valuable time building the reputation associated with a trademark, only to receive a cease and desist letter from the trademark owner. Worse yet, it can result in being served with a lawsuit and needing to retain a litigator, with all the enormous expenses that litigation entails.
Generally, if there is a conflict between two entities using the same or substantially similar trademarks for similar goods, the one to use the mark earlier gets to register and use the mark. By conducting a trademark search ahead of time, you protect your company's investment of money and time in marketing and branding.
How to do a Trademark Search
A trademark search can start with the United States Patent and Trademark Office's "TESS" (Trademark Electronic Search System) database. If you are in the area, you can also visit the Trademark Public Search Library in Alexandria, Virginia to conduct a free federal trademark search.
However, you should search not only for marks registered with the USPTO, but also marks registered in your state and online domain names registered at ICAAN.org. The state trademark database in many states is part of the Secretary of State's office, but in some states, it is a separate department. There are fee-based trademark search engines available too.
It is important to diligently search for unregistered trademarks as well. You can do a basic online search of your trademark to make sure that others are not using it for the same purpose. Although there is no requirement to register a trademark to use it, a senior user (someone that uses the mark earlier) can prevent a junior user (someone that uses the mark later) from using the trademark down the road by bringing a trademark infringement suit.
When a trademark is federally registered with the USPTO, a court hearing an infringement suit assumes the defendant knew it was federally registered. This can mean that a defendant has to pay damages and the trademark owner's attorney's fees.
You should be aware that when another company is using the same or similar name to the name you are considering to market goods or services that are totally different from yours, you may still be able to use the trademark you have been considering. An experienced trademark lawyer can help you decide whether to use the trademark under the circumstances.