Updated November 12, 2020:

A common law trademark search is the most comprehensive trademark search that a company can conduct. It involves searching through databases, news, business, and public records, legal and financial records. Your goal in a common law trademark search is to find out if someone is using a similar trademark, even if the mark isn't registered in the Patent and Trademark Office (USPTO) database.

Registered Trademarks vs. Common Law Trademarks

According to the USPTO, a trademark is a "word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies the source of the goods of one party from those of others." Trademark owners can register their marks at the Patent and Trademark Office. However, registration is not necessary for the trademark to be valid. The symbol ® indicates a registered trademark, while unregistered trademarks may have the ™ symbol.

In the US, trademark rights result from use, and not registration in the USPTO database. The first business to use a certain trademark on an ongoing basis owns common law rights to it. The rights owner can sue competitors that use similar marks for trademark infringement.

However, there are some limits on common law trademark rights. In fact, federally registered trademarks are valid throughout the country. Unregistered trademark owners can only claim rights for the locations where they actually sell their products or services.

The goal of trademarks is to make sure consumers don't get confused. It makes sense that a trademark exists if the public recognizes it, even if it's not registered. This rule protects consumers but makes things harder for companies. In fact, simply searching through federal databases before launching a product isn't enough.

A trademark search usually only includes trademarks that are registered in the USPTO database and in state databases. A common law trademark search, instead, includes a number of other resources to also search for trademarks that aren't registered.

Completing a common law trademark search is important to determine if your chosen trademark can be registered or not.

There are multiple resources you can use for your search. The most common are:

  • Internet The internet is where you should start your search. Searching for your mark and similar marks on search engines such as Google and Bing can give you a fast first answer.
  • Newspapers and TV sources Newspapers can be a great resource to look for marks protected by common law. It's impossible to list all of them, but city and national newspapers, financial articles, lifestyle publications, and TV program transcripts should all be part of your search.
  • State Trademark Registers Each state has a register where you can look for marks that are not registered in the USPTO.
  • Cases and administrative materials Don't forget to include in your search four million of U.S. and state law cases, as well as the federal and state statutes.
  • Yellow Pages Although the big yellow book isn't used much nowadays, the Yellow Pages remains a great resource to look for marks that are not in the Federal and State government records.
  • Business and financial records Mergers and acquisition reports, U.S. public and private companies records, and international companies records are other available resources for your search.

Before launching your new business, it's a good idea to do a common law trademark search on the name you want to use for your company. This is why:

  • To accelerate a business launch

It can take up to one year to get the registration of your trademark. This is a long time to wait if you need the USPTO's approval before selling your product/brand. A trademark attorney will only take a few weeks to complete a common law search. You'll know much sooner if you can use the mark and start your business before the registration approval.

  • To avoid wasting money

Spending money on advertisement, gadgets, and business expenses isn't wise until you've completed an extensive trademark search. If you begin making your product and the USPTO rejects your application, it will be all wasted money. Also, you might be sued for trademark infringement before you receive the USPTO rejection.

To sell a product that customers can easily identify without confusion is in any company's best interest. Also, confusing customers with a mark that's similar to another one can because problems later on.

  • To avoid trademark infringement

Doing a common law search is your best option to give you peace of mind and avoid getting sued for trademark infringement.

If a competitor sues you for trademark infringement and succeeds, you won't be able to use your mark. This means you'll have to replace it on all advertising materials, your website, and gadgets, which can become a very expensive problem. Also, the court might order you to pay yours and your competitor's legal fees and pay damages to your accuser.

You should also keep in mind that even if the USPTO approves your trademark application, this doesn't mean you automatically hold the trademark rights. The USPTO, in fact, only checks its database when deciding to approve or deny an application. If a company has been using the same or a similar mark, it owns the rights to it even if the company never applied for trademark registration.

If you register a trademark and the previous user sues you for infringement, you will see your trademark registration canceled and you won't be able to use the mark anymore. If the previous user had trademark rights in a specific geographic area, you won't be able to expand your business in that area.

Be also aware that having a corporate name approved by a Secretary of State doesn't grant you trademark rights, and you could still be sued for infringement.

  • To develop a strong brand name

Choosing a trademark that is similar to other brands and confusing to the public might lower the value of your brand. It's smart to do a complete search, choose a name that stands out, and develop a stronger brand.

In order to make sure you can use your chosen mark and be protected, you will need to go through a few steps.

  1. Search the Internet for your mark Searching the web should be your first step. Search with a search engine such as Google, then look through the products offered within your industry.
  2. Search in the USPTO Database Searching for your mark in the USPTO database, although not enough to give a final answer, is the next step. Simply go to the USPTO homepage, click Trademarks, and then Search Trademarks Database. You will be redirected to the TESS search engine, which lets you search for a basic wordmark or a word. If your mark is a visual one, you need to first look up the Design Code Search Manual to find the relevant design codes.
  3. Search as broadly as possible Don't limit the search to your immediate business area, but also consider other classes of products that might be related to your product. When a company acquires trademark rights, it also acquires rights for related products that it might offer in the future.
  4. Don't limit the search to your identical mark Try and locate possible variations of your mark. Look for words that sound similar, plurals, gender variations, and foreign translations. Choosing a similar mark that may confuse the public can lead to trademark infringement.
  5. Expand your search and get professional help Not finding similar marks in the USPTO database or the Internet is good news, but it's not enough to ensure you can use the chosen mark. It's time to go through the above-listed resources and complete a Common Law Trademark Search. If you feel overwhelmed by the thought of performing such an extensive search, you can hire a trademark lawyer to do the research for you. A professional will give you a report of any similar trademarks they find. This type of search can be expensive (depending on the quality of the search, it can cost from $25 to $500), but it's well worth the cost if you plan on investing lots of money in your new business.
  6. Apply for registration of your mark If you have completed a common law trademark search and didn't find a mark similar to yours, congratulations! You can now apply to register your mark with the Patent and Trademark Office.

Frequently asked questions

  • What if I find a similar mark in use?

If you find a similar mark already in use, don't panic. It may be frustrating, but it's better to find out now than later. Failing to properly search for similar marks could lead to a cease and desist letter and having to pay damages and lawyer's fees, and it could easily destroy your business. So it might be time to start thinking about a new name for your product.

However, this is not always the case. Courts consider many factors to decide whether two marks are in conflict. If the two similar marks are used for different classes of products, it might be possible for you to use your chosen mark. Other factors you should think about include how well-known the competitor's mark is and how long it's been in use. In the case of such a conflict, your best bet is to consult with an attorney.

  • Who should perform the search?

Professional searches can be expensive, so many people decide to do the search themselves before applying for a trademark. Business owners can access a number of free or cheap databases where they can search for similar marks, in addition to the USPTO database. However, many people don't realize that a search of these databases - where data is often old - is very basic and shouldn't be trusted.

That doesn't mean you shouldn't use these tools at all. Searching through the databases is a good first step, but unless you are qualified to run full searches, you should hire a professional to help you. Only an expert trademark lawyer, in fact, is able to read the results and tell you where you stand.

Be also aware of companies that promise cheaper searches. Usually, they perform their searches by looking through the same databases you could search yourself. Common law trademark searches done by professional attorneys are expensive, but it's a necessary expense if you are serious about your business.

Even if you have the time and patience to go through the databases plus other resources, it could be easy to skip something - a mistake that could be expensive, much more expensive than the attorney's fee.

Performing a common law trademark search is essential to launch a strong and successful brand. If you have any doubts about performing a trademark search, the lawyers on the UpCounsel's marketplace can help you out. With an average of 14 years of legal experience and a degree from some of the most important law schools in the country, UpCounsel lawyers can make sure your business is off to a great start.