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How do I conduct a Federal Trademark search?

matt_editedAgain, we are totes excited to have Intellectual Property attorney and guru Matthew Goings of Goings Legal, LLC guest post today!

Matthew Goings is the founder of Goings Legal, LLC, a boutique Intellectual Property law firm located in Atlanta, Georgia representing individuals, start-ups, and small businesses in their intellectual property and contract needs. I know what your thinking: “He was a total band geek.” You are absolutely right. During his time as an undergrad at the University of Georgia, he marched tenor saxophone in the Redcoat Marching Band. He was also a member of the Brotherhood of the music fraternity Phi Mu Alpha Sinfonia (sounds like one of those secret societies…).

If you have any questions or concerns about your wedding or event business’ trademarks, copyrights, or other intellectual property, be sure to give him a call.

DISCLAIMER: THIS INFORMATION IS INTENDED FOR INFORMATIONAL AND EDUCATIONAL PURPOSES ONLY AND IS NOT INTENDED AS LEGAL ADVICE. NEITHER MATTHEW GOINGS NOR ANYONE AFFILIATED WITH THIS SITE IS YOUR LAWYER.

What is a federal trademark search? What is the trademark application process like and what does it entail?

A federal trademark search at its most basic level is simply conducting a search to see if anyone else has registered a word mark or logo that is similar to the one you want to use. An attorney who is assisting a client through a registration should always conduct a search in order to ensure that both they and the client have done their due diligence. A federal trademark search begins in the United States Patent and Trademark Office’s (USPTO) online system, Trademark Electronic Search System (TESS), which anyone with internet can access. By searching TESS, you can find marks that are the same, or similar, to your desired mark. It shows marks that are both LIVE (in use) and DEAD (no longer in use). Even if your desired mark does not show up in TESS, it is prudent to at least do a cursory GOOGLE search because someone may have registered it at the state level or have common law rights to the mark. Searches can range from simple elimination searches that look for exact matches to your desired mark to in-depth searches conducted by dedicated services that identify anything remotely related to your desired mark. Most of the time, exhaustive searches of that nature are unnecessary and are usually only used by large corporations to defend their marks.

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Conducting a Federal Trademark search is not as tricky as putting out a truck fire, but you may still need some help.

The federal trademark application process can be complicated, and it is best to hire a qualified attorney to assist file the application on your behalf. The process begins by determining if your mark qualifies for federal registration. In order to register federally, you must have already been using the mark in interstate commerce. This means doing business across state lines. For a long time, this meant having to actually have provided services or goods in multiple states, however, with the advances in technology, simply marketing yourself for services in multiple states can qualify as interstate commerce, so long as it is done in good faith (i.e. you would actually travel to the other state to provide goods or services and are not simply advertising simply for the federal mark).
The next step is conducting a search in order to ensure that you desired mark is not already registered. However, a prior registration of your mark does not always preclude you from registering your mark, provided that it is in a different class of goods or services. Take the marks LEXUS and LEXIS. These two trademarks are extremely similar; they only differ by one letter and sound exactly alike, however, they are allowed to co-exist because they encompass different classes. Classes are categories that goods and services are divided into. LEXUS produces cars, while LEXIS provides a legal search engine and other resources.
Once you have cleared your desired mark through a trademark search, you can begin the application process. The USPTO has 4 different applications you can use. One application is called an Intent-to-Use. You would use this type of application only if you have not yet begun using the desired mark but have a good faith intention to use it. Good faith means you actually plan on using the mark and are not just trying to prevent another from using it. The advantage to this application is that it essentially allows you to reserve the mark for up to 3 years without fear of losing it while you develop your product or service. To downside is that it adds more cost the longer you keep up the intent-to-use. The first set of applications cover marks that are already in use. The other 3 applications all apply to when you are actually using the mark, with the only differences being the cost and the amount of information about you and your use required up front. The cheapest of these 3, the TEAS PLUS, comes in at $225, requires the most information, conducts the entire process online, and is generally the fastest of the 3 processes. The other 2 cost $275 and $325 and allow you to provide certain information later in the application process. You will also need to provide a specimen, like a photo of goods bearing your mark, to the USPTO to prove use.
Once you have submitted the trademark application, the USPTO will examine the application and communicate with the attorney regarding the status. At this point, all application processes vary. The office may initially reject your application and require that you disclaim a portion of the mark or change the description of goods for the mark. Disclaiming means that you are giving up the exclusive right to a certain portion of the mark. For example, if your company name uses a term that is common to the wedding industry, the USPTO would likely require that you disclaim rights that word, meaning that it is permissible for another company to use that term without violating your trademark. If and when the USPTO approves your application, it will be published by the USPTO for review by the public. During this period of time, others can oppose your application, meaning they formally tell the USPTO that they should not register your mark. If this happens, the 2 parties go through a process resembling a trial with the USPTO, each making their case on why the mark should or should not be registered. If the mark is not opposed or the USPTO decides against the opposition, your mark will be registered. Once registered, you will enjoy national protection for your mark extending back to the date you applied, and after 5 years of continuous use, your mark becomes incontestable.
While many think the process is over at this point, it is not. You must continue to maintain your registration. So long as your properly maintain your registration, your trademark protection can last as long as it is in use.

About 

Rob Schenk is one of the country’s most prominent “Wedding Lawyers,” a special designation for trial lawyers representing wedding and event industry professionals involved in business disputes and in transactional matters.
Rob was awarded Rising Star of 2015, 2016, and 2017 by Super Lawyers, an honor bestowed on only 2.5% of attorneys. Rob has previously been recognized by his colleagues with a Martindale-Hubbell’s AV Preeminent Rating. Rob is licensed to practice law in Georgia, Tennessee, Florida, California, and New York.

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