Trademark Screening

Scenario: you’ve brainstormed with a core group of confidants and come up with a descriptive, compelling, splashy name for your company, brand, or product. You run it through the U.S. Patent and Trademark Office’s quick search online and guess what? It’s available! You’re golden. Company naming is easy, right?

Unfortunately, even if you’re lucky enough to get this far with your favorite name, it doesn’t mean you’re in the clear. If you search the USPTO’s database, you may only find exact matches, but the basis for trademark infringement is “likelihood of confusion.” That means there could be alternate spellings or merely similar-sounding names that could disqualify your claim. If you press on without knowing these potential conflicts, you risk wasting money and time.

The truth is that the names that kindle the most initial enthusiasm are often the ones with treacherous trademark issues lurking behind them. The reason? If there’s an incredible but somewhat obvious name choice, it’s likely someone has already snapped it up. Our clients often love the names with the highest risk because those are the most popular.

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Trademarks Explained

Before we dive into trademark screening and trademark registration, let’s clear up what a trademark is and why they matter.

A trademark can be a unique phrase, word, or symbol that represents the source of particular goods and services. A trademark is used to protect your brand. If a company uses the registered trademark symbol after their name or logo, it means they successfully registered their mark with the United States patent office or an international approved trademark office. Essentially, trademark rights are protected by law.

Newcomers who want to complete a trademark application for their own business must ensure that their new mark is different enough compared with existing marks. If proposed trademarks are too similar, they will be rejected by the patent and trademark office. The aim here legally is to ensure that new marks don’t confuse companies that have already operated under the similar or same name on the market.

Typically speaking more distinctive names or logs are likely to be accepted and will be legally protectable.

What Is Trademark Screening?

Preliminary trademark screening is a critical step when finding the right name for your company. It will check whether a similar mark exists for names that you interested in.

Also referred to as ‘prescreening,’ or knockout search, this guarantees that you don’t end up in the market with a name that isn’t available. The main reason for preliminary trademark screening is to eliminate names that aren’t available due to existing trademarks and avoid potential trademark conflicts.

It’s worth noting that this isn’t the same as a full clearance search. While preliminary trademark screening is often a strong starting point that’s all it is.

A full clearance search will include a far deeper and more extensive evaluation of unregistered or common law uses and registered trademarks.

This will usually include:

Near-exact hits

Permutations

Phonetic equivalents

other name variations

A search in all international classes and use in other countries

As you might expect, this process is more time consuming but will provide complete peace of mind that your new trademark is available.

Trademark screening business team meeting

Why Do You Need To Check Your Trademark?

There are several reasons why you should arrange preliminary trademark screening.

First, it’s possible that the trademark office rejects your application. If this does happen, then you’ve wasted time, and money through your trademark registration process.

Alternatively, if you use a name that is already in use or too similar to an existing mark, then you could get a “cease and desist” letter. Believe it or not receiving a letter like this immediately is not the worst case scenario. It’s more problematic when brands or companies crop up years later, demanding you stop using a name after your business is in full swing.

The other key point to remember is that trademark law is complicated. It’s not just as simple as having the same name as another mark. Don’t forget, there are countless examples of businesses on the market that use virtually identical names. An example of this is Dove chocolate and Dove soap. The reason they can do this is that the companies or brands are part of two completely different markets.

Do You Need To Hire A Trademark Attorney For This Process?

At this stage, you might think that your best option to avoid a legal nightmare would be to hire a trademark attorney for a little help and guidance. Couldn’t they help ensure that your mark isn’t too similar and guarantee a successful registration?

The problem is that a full search on a name take a lot of time and those lawyers charge by the hour. This isn’t something that you want to add to your budget. The good news is that you don’t need a lawyer to screen a name or multiple names. You need a trademark research consultant. Professional consultants can provide a legal opinion and a full search report with their findings including whether your trademark is too close to an existing mark. They’ll complete the same search for a fraction of the cost that a lawyer would charge and ensure that you don’t end up in a dispute with another trademark owner.

The Differences Between A Trademark And Domain Name

It’s easy to get trademarks and domains confused. One of the most common misconceptions is that the two or somehow linked. It’s important to note that registering a trademark does not provide you with rights to domain names. Similarly, owning a domain name doesn’t provide you with the legal trademark. Obtaining a domain or a unique website name is a completely different process. Although, searching for domain names with an identical and similar use is a smart preliminary step as part of trademark research.

Creative designer team trademark screening meeting and brainstorming

How Our Extensive Trademark Screening Works

Thankfully, we don’t do a glitchy quick search and call it a day. Instead, we perform a full search for you and use a variety of screening tools. We have a dedicated team of researchers who use the same services that trademark attorneys use. In addition to federal trademark checks, we also perform state checks, common law usage, and web screenings. We also have the ability to search global trademarks in a number of countries if necessary.

This is the kind of nitty-gritty stuff that we deal with every day because we understand that the screening process needs to focus on more than availability. There are nuances and subtleties to trademark law and common usage law that only experience can prepare you to catch. And we do our trademark screening as part of our standard business naming service — which means you incur no extra fees to attain that desired peace of mind.

Indeed, we understand that this screening process is an absolutely vital element of naming your company. Let us take care of this process for you and guarantee that your perfect name is legally protected.

Business people discussing new trademark screening project in office

Why You Should Let Us Solve Your Company Naming Conundrum

Our decades of experience have sharpened our skills and made us pretty savvy name screeners. But we don’t rely too heavily on past experience — we stay abreast of the shifting trends so that your name is relevant in today’s rapidly changing culture. You can feel fully confident that the names we pitch to you have cleared all of our preliminary screenings — reducing the chances that your legal will reject the name because it’s too high risk for your company, brand, product, or service. We can screen the market for identical and similar goods as well as similar marks.

We use the most advanced screening tools to ensure that you are not risk of being too close to marks by other companies. we can even search for similar trademarks in other countries.

As well as ensuring that you mitigate levels of trademark risk, we can help in other areas too. This includes completing the right description of goods and services for your proposed brand and determining the right trademark classes for your proposed trademark.

Dodge the cost of an expensive legal service while still gaining the quality solution you need to protect the future of your brand.

To top it off, we work for a flat fee, which means we repeat the screening process as many times as it takes to earn your satisfaction. We can even screen an additional name for your company if required. That’s why we’re here! We deliver a cost effective solution and out your needs first.

If you are interested in learning more about how our trademark screening service can protect the future of your brand and ensure successful registration, please do not hesitate to contact us today. A friendly member of our team will be happy to assist you further.