5 Crucial Steps for a Comprehensive Trademark Search

Step 1: Choose a trademark look up tool to search trademarks

While there are several trademark look up tools available for conducting a trademark clearance search in individual jurisdictions—such as the USPTO's Trademark Electronic Search System (TESS), for example—using a commercial database, such as Questel’s Markify Trademark Clearance and Monitoring Platform will enable you to search trademarks across multiple jurisdictions and databases, including common-law, company name, and pharmaceutical data. 

Step 2: Create a shortlist of names

The first step in any trademark search project is to identify the brand names and assets you want to search and clear. Whether your shortlist includes words, phrases, logos, or a combination of these elements, it's important to be as specific as possible when creating searches to ensure that results are relevant and accurate. 

To ensure your results are relevant and accurate, you will also need to specify the countries and regions in which to conduct your searches, as well as the relevant ‘classes’ of goods and services. Trademark classes are groups of related product types; for example, ‘class 25’ covers trademarks relating to ‘clothing, footwear, headgear’. 

Step 3: Conduct a preliminary search

Before conducting a comprehensive trademark search, it's a good idea to do a preliminary “knock-out” search to identify any obvious conflicts. While you can access helpful information by searching the internet, business directories, and social media platforms, this will add considerable time. That’s why we recommend using a specialist trademark screening tool, such as Markify ProSearch™. It will quickly identify identical or similar marks, enabling you to adjust your shortlist, modify your brand strategy, or seek legal advice in good time before your intended brand or product launch. 

Step 4: Undertake a comprehensive search

The next step is to conduct a comprehensive trademark availability search using your chosen search tool. Platforms, such as Markify Comprehensive Search will enable you to create a full assessment in minutes, searching for trademarks in your industry and related industries, according to the specific goods or services. It's important to note that even if you don't find any identical or similar marks, this doesn't guarantee that your trademark is available for use. That's why we recommend using a trademark look up tool that will also enable you to search common-law databases to identify any unregistered trademark rights.  

As well as identifying similar and identical words, our comprehensive trademark search tool will also enable you to search databases for phonetically similar marks, misspellings, and foreign translations of your chosen trademark. 

Step 5: Analyze results

Once you've conducted your trademark search, the next step is to analyze the results to identify any potential conflicts. If you find any similar marks that have been registered or used for similar goods and services in your chosen jurisdiction, you may need to modify your trademark or seek legal advice.  

Conducting a trademark search is crucial for several reasons: 

• Avoid trademark infringement: It can help you avoid inadvertently infringing on someone else's trademark rights. If someone else is already using a similar or identical mark for similar goods or services, you could be liable for trademark infringement.
• Save time and money: Conducting a trademark search before filing a trademark application can save you time and money. If your trademark application is rejected because a third party with prior rights raises an objection, you'll have to start the process over again. Likewise, if you launch a new company, brand, or product name using a trademark that has been registered or used by a third party, you may have to rebrand and relaunch at potentially considerable expense.
• Build a strong brand: It can help you build a strong brand by ensuring that your trademark is unique and distinguishable from those of other entities. 

For more advice on how to search trademarks effectively, read our article ‘Technology, Technique, Knowledge: Three Strategic Ingredients for Effective Trademark Search.’ 

What happens next?

Once you have selected and cleared your chosen brand name, the next step is to register that name as a trademark to shore up its protection. Consider working with a trademark attorney firm to obtain the broadest coverage possible for your intended business activities. Once the mark has been registered, you should also consider using a trademark watch service—such as Questel’s Markify Watch platform—to monitor for any future trademark applications that could infringe on your prior rights. Subscribing to a brand monitoring software or online brand protection service may also be recommended to identify any potentially infringing use of your trademark or brand names online. 

Conducting a comprehensive trademark search is a crucial first step for protecting your brand assets and avoiding trademark infringement. By following the five steps outlined in this blog, you can conduct a thorough clearance search and ensure that your trademark is available for registration. 

Get started with step 1 by choosing your tool to search trademarks today. Whatever your needs for your trademark look up tool, you can meet them via our Markify Clearance & Watch Platform. Contact our subject matter experts to find out more.