Before adopting a new trademark, trademark searching should be performed. Ideally, a list of several alternative possibilities should be developed. A quick online search can be performed to eliminate some of the alternatives from the list, before you go to your attorney to perform a more expensive and comprehensive clearance search.

To perform an initial search, simply go to the U.S. Patent and Trademark Office's TESS web site, currently at tess2.uspto.gov, and put a potential marks in the search box. If there is a result that is similar to your mark, for similar goods or services, you should probably strike that possibility off the list. If there are no relevant hits, also try synonyms, translations, and spelling variations. Also try similar sounding words. Also try leaving off prefixes and suffixes.

The ultimate test is whether there would be a likelihood of confusion between existing marks and the mark you are considering. To determine whether there would be a likelihood of confusion, various factors should be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impressions; 2. The similarity or dissimilarity of and the nature of the goods or services as described in an application or registration in connection with which a prior mark is in use; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which buyers to whom sales are made, i.e., "impulse" vs. careful sophisticated purchasing; 5. The fame of the prior mark (sales, advertising, length of use); 6. The number and nature of similar marks in use on similar goods; 7. The nature and extent of actual confusion; 8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion; 9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); 10. The market interface between the applicant and the owner of the prior mark; 11. The extent to which applicant has a right to exclude others from use of its mark on its goods 12. The extent of possible confusion, i.e., whether de minimis or substantial; 13. Any other established fact probative to the effect of use.

When considering whether to allow the registration of a new trademark application, the U.S. Patent and Trademark Office tends to focus on only some of these factors, namely: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; 2. The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; 5. The number and nature of similar marks in use on similar goods; 6. A valid consent agreement between the applicant and the owner of the previously registered mark.

When performing your search, you can simply ask yourself if your mark is close to existing registered marks such that a consumer might be confused as to the source of the goods. After eliminating some marks, you should take the remaining options to your attorney and request a "full search."

Note that a preliminary search on TESS is limited to Federal registrations or applications recorded in the United States Patent and Trademark Office. An online TESS search gives some indication of whether or not it is advisable to use a mark or file a federal trademark application. However, there are many trademark users who have common law rights in marks that are not registered in the U.S. Patent and Trademark Office. This is particularly true where a mark is used only in a limited geographical location. Owners of such common law marks can prevent later users from using a confusingly similar mark in the same geographical location, even though their mark has not been federally registered.

Thus, a full search should be performed after performing an online search to knock out some clearly poor choices.

When selecting a mark, be aware that some types of marks are stronger and easier to protect than others. Terms that do not exist in any language make the strongest marks. An example would be "Exxon." It is unlikely that competitors would already be using such a mark for simlar goods so these marks are easiest to register and police. The next level down are marks that do exist in a language but do not suggest what goods or services are sold in connection with the mark. An example is "Amazon" for book sales. For small businesses, these are the only types of marks that should be considered. Words that are more descriptive, that the marketing people like, are harder to register and harder to police. It is more likely that there will be competitors that also use similar descriptive terms for similar goods or services and thus your advertising dollars will be diluted as consumers will not be able to readily distinguish you from your competitors.