What Are the Best Tips for Trademark Research?

Jan Fletcher

A trademark may be linguistic, symbolic, mechanical, or any combination of these. Trademarks are used to claim exclusivity to a memorable symbol connected to a brand. A service mark is the same as a trademark, but is used in marking a service, not a product.

Part of an application to register a trademark.
Part of an application to register a trademark.

The first tip for trademark research is to determine if the trademark, or something very similar to the trademark, is already in use. Ideally, this should be done before an individual, business, or organization begins to use a trademark. Attorneys with a focus on trademark law are typically employed to conduct these searches. Accurate and thorough trademark research is of critical importance, as the consequences of trademark infringement may be costly in legal fees and possible lawsuits.

In the U.S., when a trademark application is submitted, the process of approval includes publishing a notice of the intent to claim that trademark. Publishing the mark allows others an opportunity to consider if the proposed trademark infringes on an existing trademark already in use. If the trademark owner operates within a local or regional area, trademark research at a national level may not reveal a potential trademark infringement at the local level. The second tip is to extend the trademark research to local jurisdictions as well as at the national level.

A trademark may also be registered in multiple countries, either one country at a time, or simultaneously in multiple countries through the Madrid Protocol, an international treaty to which some nations adhere. The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland, is in charge of trademark registrations within this registration system. Even at the international level of registration, however, trademark research alone is no guarantee that trademark infringement will not occur. Each country within the Madrid Protocol has its own laws regarding whether a trademark will be protected.

Another tip is to seek legal advice if, during research, any concerns with trademark infringement have arisen at any stage of the trademark claim process. To avoid claims of trademark infringement, experts recommend creating a new trademark, which is formed of newly coined words with spellings that have no meaning. A famous example is Exxon. Using this trademark naming convention can offer a measure of protection in ensuring exclusive rights to the mark. Ongoing protection of a mark also requires using the mark both consistently and persistently.

Trademarks are not necessarily the same as a business or individual's name, but at times an individual name may be trademarked. An example is Wendy's, a global quick-serve restaurant business that was named after the owner's fourth daughter. Trademarks may be registered, or they may be trademarked through the convention of common law. This may occur in nations where jurisprudence was based in part on English common law, which recognizes the right of ownership to something invented or used for the first time.

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