The USPTO's Free Online Trademark Search

You can conduct a very basic, very preliminary trademark search on the U.S. Patent & Trademark Office website (www.uspto.gov). A lot of clients call me up to tell me that they've already searched this online database, and that they did not find any conflicts with other trademarks. However, this free online search is usually not enough to clear a trademark for use and/or registration.

One of the biggest limitations to the free online search is that it will only display results that feature the words you typed into the search. For example, if you search for the term SPARKLE WATER, it will return all results with the terms SPARKLE WATER in them. However, it would not return a result for something like SPARKLING H2O, which would likely be confusingly similar to SPARKLE WATER. Therefore, the free online search is to be used only for the purpose of discovering identical federally registered trademarks, and not necessarily confusingly similar federally registered trademarks. As is well-settled, a proposed trademark need not be identical to a prior-existing trademark registration to be deemed confusingly similar.

Additionally, the free online search does not cover other trademark databases that should also be searched before proceeding to use a proposed trademark, namely, the state trademark databases of all the 50 states, and common law trademark databases (such as national business directories and internet domain names).

Accordingly, although the USPTO provides a free online trademark search feature on their website, it is highly recommended that you have a professional trademark search conducted on your behalf by a competent trademark attorney.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Attorney or General Practitioner?

If you're a small business owner, you probably have some kind of legal counsel. In my experience, most small business owners have the benefit of a local attorney who helps them with the company formation process and general legal and contractual issues. However, most small business owners do not have a trademark attorney for the very simple reason that trademark attorneys are hard to come by in small or mid-sized communities.

The question then arises: "Do I really need a trademark attorney to handle my trademarking issues, or can my local attorney do it?" The answer to this question of course depends on the competency of your local attorney in the field of trademarks. Some general practitioners may have a particular expertise in intellectual property matters, in which case it might make sense to allow your local business attorney to handle your trademarks. However, in the vast majority of cases, the trademark registration process is not one with which your local attorney would be very familiar. Accordingly, it often makes sense to seek the counsel of a licensed trademark attorney before filing a trademark application.

One of the main advantages to having a trademark attorney on your side is the experience he or she has with the U.S. Patent & Trademark Office. A competent trademark lawyer will likely be able to spot potential problems with a proposed trademark right off the bat, sometimes even before conducting a trademark search. For example, if a client were to ask me to help them trademark the term "ROSENBERG" for a line of clothing, I would know to tell them that such a term would likely be rejected by the Trademark Office as being primarily merely a surname, and not an indicator of the source of the clothing. Somehow I doubt I would know this kind of information if I were a contracts lawyer.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration: Search Before You Sell

As a trademark attorney, I get a lot of calls from clients who are interested in securing their trademark rights to a particular name they have chosen for their goods or services. I explain to them that the first step in the trademark registration process is to conduct a comprehensive trademark search for the name they have chosen in order to make sure that the name, or a similar version of the name, has not already been trademarked by others.

At this point, some clients balk at me, telling me that their name is unique, and that they are quite sure that no one else in the world is using that particular name. However, just because no else is using the same name does not mean that the proposed trademark is available for use and registration. In fact, the test for trademark infringement is not "identical" use of another's trademark, but rather "confusingly similar" use of another's trademark. Therefore, although the terms "ALLIGATOR" and "CROCODILE" are completely different words in terms of sound and spelling, they present very similar commercial impressions, such that they could be "confusingly similar" in meaning when used on similar goods or services in the same industry. For example, ALLIGATOR COSMETICS could be held to be confusingly similar to CROCODILE COSMETICS if both companies provided cosmetic products.

In order to avoid any headaches and further expenses in the future, a business should always have a comprehensive trademark search conducted by competent trademark counsel before proceeding to use the name in commerce, no matter how sure the business owner is that "no one else is using the name."

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com