How to Make Sure You’re Not Infringing on a Trademark

by Megan Sullivan

5 min read

If you’re thinking of starting a business, one of the first things you’ll need is a company name and maybe even a logo. The second thing you’ll want to do is protect both from misuse. In the U.S., there are laws in place that protect trademarks, and those are overseen by the U.S. Patent and Trademark Office (USPTO).

Below is an overview of how to register your trademark and how to make sure you’re not infringing on anyone else’s trademark.

What Is a Trademark?

A trademark indicates a word, symbol or design that is unique and distinguishes itself from other words, symbols and designs. In common language, a trademark is a brand name and/or logo. Words like “Kleenex,” “Barbie” and “Kodak” are all trademarked words that represent brand names, and commonly carry a superscript “TM” to designate the mark. Trademarks are granted by the USPTO.

Trademarks do not protect inventions, which are covered by patents and involve a separate application process. They also do not protect original artistic or literary works, as those are covered by copyright.

The most important thing to do when you’re ready to register your trademark is to search for similar trademarks that you might infringe upon. Infringing on another company’s trademark can lead to long and expensive legal battles, so it’s really in your best interest to conduct a detailed search before you file your trademark application.

It’s important to note that while trademarks are granted by the USPTO, you will need to search more than just its database to determine if your trademark is unique.

Many people do not register their trademarks, so it’s possible a business is already operating using a name or logo similar to the one you want to use. And even owners of unregistered trademarks can still sue you for infringement. If that business has used its unregistered trademark for a long time in the marketplace and with good faith, it might even win its case.

How to Search for Existing Trademarks

1. Use a Standard Search Engine

Using your online search engine of choice, you want to search for your chosen company name in as many iterations as possible. If you have a number in your name, try spelling it out and using the numeral. Search for abbreviations of common words in your name; use a hyphen or remove a hyphen; make one word into two words and vice versa; in short, get creative, because you’ll want to conduct an exhaustive search.

Make note of any businesses that come up with names that appear to be similar, and also note businesses that offer product or service offerings that are similar to yours. If you find a company that has the same exact name as yours that also sells or offers the same services as you, you might want to consider a change.

You can also search common business websites, such as Yelp, or state business registries to determine if similar business names exist in your area.

2. Consult With a Trademark Attorney

Once you have a list of similar names or ones that you’re concerned may be too close, you might want to enlist the advice of a trademark attorney. He or she can review the names, compare them to yours and determine if another company might have a case to make for infringement.

He or she can also help you file the trademark application. You can find one in your area by conducting a search or asking for referrals from other entrepreneurs or small business owners.

3. Search the USPTO Database

The USPTO maintains a database of all trademarks, copyrights and patents that it has registered/granted. Once you’re ready to file, you’ll want to search their database as well. The USPTO website offers pages of advice on how to conduct your search, details about what is and what is not in the database and even informational videos on how best to search it. Take advantage of these resources to mitigate any confusion or frustration on your part.

If your trademark includes a design element, such as a logo, you’ll also need to search using a design code. This search can be conducted through the standard trademark database; however, you’ll want to have an understanding of the different design codes and what they represent before attempting to search.

How Infringement Works

If you find a business that has a similar trademark or logo as your company, it doesn’t matter if that company has registered its trademark or not. Once a brand name or logo has been created and used as an identifying mark it is protected as a form of intellectual property. This will give you a level of protection under the law if you choose to sue another company for infringement or you are sued.

However, by not registering your trademark, if you are taken to court, the burden of proof falls more squarely on you. The court will expect you to prove that your mark is unique and the infringer’s mark is being used in a way that’s detrimental to you and your business.

The best way to insure your rights and protect yourself and your business is to formally register your trademark. This will give the most legal protection and provide you with an immediate legal right to defend your mark against misuse

Once you have been granted your trademark, use it. Businesses that keep their trademark active through their business (i.e. through marketing materials, advertisements or other public-facing means) build equity in their trademark, which can help them if they need to defend it in court.

Trademark infringement can be a serious issue with high legal fees, meaning it’s best for you to perform due diligence upfront and do your best to avoid legal complications. While registering your trademark can be a complicated process, it’s really in your best interest to take the time and to file the paperwork.

If you need more information specific to the trademark registration process, look no further than these eight steps for assistance.

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