Before you start using your brand name it is extremely important to conduct a comprehensive trademark search of any confusingly similar or identical trademarks in relation to the same or similar goods and/or services.
The importance of this cannot be overstated. Failure to do so can result in tens of thousands of dollars in trademark litigation costs as well as the possibility of needing to completely re-brand your business name or product name.
So what exactly is involved in such a trademark search? To be most effective a comprehensive trademark search needs to include both a common law trademark search and also a search of the trademark Register in whichever country you are applying.
Ok so let’s start with a common law trademark search. For more information about what a common law trademark is click here.
So how exactly do you conduct a common law trademark search? A comprehensive common law trademark search can include the following:
- A company name search using all official records within your country.
- An identical and very similar domain name search using the most common TLDs (top-level domains).
- An internet search of the trademark name coupled with the most relevant keywords.
- An internet image search if the mark contains imagery.
- A social media search of the mark being used in the world’s largest social networks, namely Facebook, Twitter, Linkedin, Google+, Instagram and Pinterest.
The next step is to search the trademark Register in whichever country you are applying in. Each country has their own online search facility and before starting you should carefully review the searching instructions/tips that they provide.
So what should you type into the mark name field? There are a range of mark name variations that you can try to ensure that you capture all marks that are potentially confusingly similar. These include also searching for phonetic similarity, common misspellings, prefix, infix and suffix variations, abbreviations and acronyms, vowel and consonant similarity, and stemming possibilities.
Submit your search and begin to analyse the results. To do this there are essentially two factors which you need to carefully consider to determine whether a mark would be cited against your mark if you formally filed a trademark application.
Firstly, is the mark identical or confusingly similar to your mark? Secondly, are your goods and/or services similar or identical to the goods and/or services of the mark?
This is where your trademark attorney is worth their weight in gold because both of these questions will typically require the careful analysis of many existing marks on the Register. In a future post we will discuss this process in more detail.
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