An effective branding campaign begins by choosing a distinctive trademark, service mark, logo, brand, or trade dress to use in conjunction with the goods or services being offered.  The mark ultimately gives owners the ability to differentiate its products and services in the marketplace and prevent similar use by competitors.  A strong mark also serves as a safeguard for consumers and helps to maintain product or service integrity by allowing consumers to associate a name with the quality of the products they purchase.  As a result, strong brand recognition in the marketplace helps to build goodwill in the business.  Before investing in what may not be a distinctive mark and an overall branding strategy, it may be prudent to conduct a due diligence investigation that includes at least a preliminary trademark search, if not a comprehensive trademark search.

A preliminary trademark search could include a review of registered marks (both domestic and foreign) and common law marks that are identical or confusingly similar to the chosen mark.  For example, a trademark search could initially be conducted on the U.S. Patent and Trademark Office (USPTO) website, www.uspto.gov.  The USPTO trademark database generally includes abandoned marks, cancelled marks, pending registrations, and registered marks.  Depending on the mark at hand, the trademark search could include several searches directed to the mark itself, individual components of the mark, spelling variations of the mark, phonetically similar marks, and other suitable searches.  If the trademark search yields any marks that are identical or confusingly similar, then those marks could be distinguished from the mark at hand.  Otherwise, further investigation may be required to decide whether the mark should be adopted.

Typically, a preliminary trademark search could also include searches on one or more Internet search engines, such as Yahoo!TM and GoogleTM.  Searches on Internet search engines could reveal common law marks that that are currently in use in the U.S. or in foreign countries and may not found on the USPTO trademark database.  As with the trademark search on the USPTO database, the Internet-based trademark search could yield the mark itself, individual components of the mark, spelling variations of the mark, or phonetically similar marks that could be identical or confusingly similar to the mark at hand.  Depending on the Internet-based trademark search, further investigation may be required to decide whether the subject mark should be adopted.

The preliminary trademark search could also include a search of domain names that include identical or confusingly similar marks.  For example, the trademark search could include using the “whois” domain name registration database from Network Solutions, www.networksolutions.com/whois/index.jsp. As with the other trademark searches, a domain name related trademark search could yield the mark itself, individual components of the mark, spelling variations of the mark, or phonetically similar marks that could be identical or confusingly similar to the mark at hand. Further investigation may be required to decide whether the subject mark should be adopted based on the domain name trademark search.  In addition, the domain name investigation could identify available domain names that incorporate or are similar to the subject mark in an effort to begin preparing for the branding campaign, preemptively register certain domain names, and avoid possible cybersquatting situations.

The preliminary trademark search could further include a search of business entity and trade names.  For example, the trademark search could include a search of a state’s Secretary of State records or a compiled database aggregating all fifty states’ business entity records such as a LexisNexis® database, www.lexis.com.  As with the other trademark searches, a business entity name related trademark search could yield the mark itself, individual components of the mark, spelling variations of the mark, or phonetically similar marks that could be identical or confusingly similar to the mark at hand. Further investigation may be required to decide whether the subject mark should be adopted based on the business entity name related search.

In cases where a trademark search may be due in other databases or in foreign countries, a comprehensive trademark search may be required.  The comprehensive trademark search could also include searches for a particular state, region, or industry.  As with the preliminary trademark search, the comprehensive trademark search could include several searches directed to the mark itself, individual components of the mark, spelling variations of the mark, phonetically similar marks, and other suitable searches.  If the comprehensive trademark search yields any marks that are identical or confusingly similar, then those marks could be distinguished from the mark at hand.  Otherwise, further investigation may be required to decide whether the mark should be adopted.

If you would like to know more about trademark law and conducting a trademark search, please contact a Dallas trademark attorney.