While some people choose to hire attorneys to guide them through the trademark application process, others choose to use a trademark investigation company, which can cost thousands of dollars less. It is important to remember that when you hire someone to do your research, they will not only be looking for name similarities in federal and state trademark registries, but also in common law lists.
Many people are under the impression that they can conduct their own extensive search using the help of search engines in addition to the United States Patent and Trademark Office (hereinafter referred to as the USPTO). While it is a good idea to familiarize yourself with the USPTO website, people sometimes believe that the data they collect from this website is truly representative of the trademark names currently in use. The USPTO website is never an exhaustive way to search for the name you hope to register! the website is not updated regularly, and in addition to this, you can ONLY search for federal trademark registrations with the USPTO, NOT State Trademark Registrations OR Common Law Registrations!
It is imperative to search for federal and state trademark registrations. Y Common law records because it is the the only way to make sure your search was comprehensive. Federal and state trademark registries look for companies that have a federally registered trademark or those that have registered a state trademark. When these records are searched, any federal or state marks that are pending or registered will be visible to the investigator. Common law registries examine those businesses that are in operation but have not necessarily applied for a federal or state trademark. When searching for common law records, millions and thousands of newspaper articles, city business listings, periodicals, incorporation listings, DBA, LLC, etc. are examined for name similarities. Although such companies do not have a trademark, they may have “first use rights” to the name. This could mean that they still have ownership of the name within their business area AND the ability to take legal action if they determine that your name and company are the same or similar.
If the investigation is clear, the next step is to prepare and submit the application. This can be done by anyone; however, the USPTO is very particular about as the application is prepared, so it is better to leave it in the hands of professionals.
Three steps: federal and state trademark search, national US common law search, and application preparation and filing, and the trademark could be YOURS!
