Why do I need to conduct a trademark search?

You need to determine whether another business is already using a trademark that's identical or similar to the one you want to use, to ensure that you won't violate someone else's trademark rights.

The consequences of failing to conduct a reasonably thorough trademark search may be severe, depending on how widely you intend to use the trademark and how much it would cost you to change it if a conflict later develops.

If the trademark you want to use has been federally registered by someone else, you will be precluded from using the trademark in any context where customers might become confused as to the source of your products or services. Also, a court will presume that you knew about the trademark registration -- even if you did not. This means that, if you do use the trademark improperly, you will be cast in the role of a "willful infringer." Willful infringers can be held liable for large damages and payment of the registered owner's attorney fees; they can also be forced to stop using the trademark altogether.

Should local businesses care what trademark someone else in another part of the country is using?

Short answer: Yes. Now for the long answer: After the Internet took hold in the late 1990s, the concept of location took on a whole new meaning. Instead of being rooted in physical space, businesses now jockey for location in cyberspace. Vast numbers of businesses -- even local enterprises -- have put up their own websites, creating a new potential for competition (and confusion) in the marketplace.

Because of this, every business owner must pay attention to whether a proposed trademark has already been taken by another business, regardless of that business's physical location. Even if your business sells products or services only to local customers, a competing out-of-state business (with a similar trademark) may be trying to sell products or services to your customers.

Can I do my own trademark search?

Yes. You can do your own search of trademarks registered with the U.S. Patent and Trademark Office (USPTO) at the USPTO website (http://www.uspto.gov). Or you can visit one of the Patent and Trademark Depository Libraries (PTDLs), available in every state. These libraries offer a combination of hardcover directories of federally registered marks and an online database of both registered marks and marks for which a registration application is pending. Most of these libraries also have step-by-step instructions for searching registered and pending marks.

In addition to searching for registered or pending marks, you may also use product guides and other materials available in these libraries to search for possibly conflicting marks that haven't been registered with the USPTO. This can be important because, even if a mark is unregistered, its existence could preclude you from:

• registering the same or confusingly similar mark in your own name, and
• using the mark in any part of the country or commercial transaction where customers might be confused.

To find the Patent and Trademark Depository Library nearest you, see USPTO's list at http://www.uspto.gov/go/ptdl.

How can I use the Internet for an informal trademark search?

In addition to searching for registered and pending marks in the USPTO's database at http://www.uspto.gov, you can now conduct a thorough search for unregistered marks by using an Internet search engine. For instance, by entering your proposed name in the search field on Google (http://www.google.com), you will get a report of every instance where the name appears on Web pages that the Google search engine has indexed. Because no search engine is 100% complete, an especially thorough search will include several additional search engines, such as MSN Search and Excite.

In addition, you may want to review merchandise at an online store. For example, if you are selecting a trademark for a new toy, you can visit "ToysRUs"at http://www.toysrus.com. Once there, you can browse hundreds of toys and do a keyword search for any toy trademark that is similar to yours. This same approach can be used for any type of product by clicking the shopping category link on one of the popular search engines, such as Yahoo.com.

Another helpful place to search for unregistered trademarks is the Thomas Register of Goods and Services, at http://www.thomasregister.com. You have to sign up as a member (free) before they will let you search.

These resources don't actually provide a list of unregistered trademarks. There is no such list anywhere. Rather, these sites list product and service names that qualify as trademarks because of how they are used to identify the underlying products or services in the marketplace.

Can I hire a professional firm to conduct a trademark search?

Many people prefer to pay a professional search firm to handle a trademark search rather than do it themselves. This can make sense if your financial plans justify an initial outlay of several hundred dollars, the minimum cost for a thorough professional search for both registered and unregistered marks.

Two well-known sources for trademark searches are the Sunnyvale Center for Invention, Innovation, and Ideas (http://www.sci3.com) and Thomson & Thomson (http://www.thomson-thomson.com).

The trademark search report you will receive consists of several sections. One section contains information from the U.S. Patent and Trademark Office (USPTO). This portion of the report consists of similar federally registered marks, pending marks, and marks that have been canceled or abandoned.

Another portion of the report is a survey of state registrations. Included are similar marks that are registered under state trademark law.

A third portion of the report consists of common law information. It is in this area that trademark search reports are especially helpful. The search companies examine numerous sources to locate unregistered users of similar marks, brand names, and even trade names (the names of businesses, rather than those of products or services).

In addition to professional search firms, you can also pay for the use of sophisticated Internet trademark searching. The leading fee-based online company offering this service is SAEGIS. Visit the Thomson & Thomson site for more information on SAEGIS.

If you work with an attorney when acquiring the trademark search, you will also get a legal opinion as to whether your proposed mark is legally safe to use in light of existing registered and unregistered marks. Obtaining a legal opinion may provide important protection down the road if someone later sues you for using the mark.

How can I find out whether a trademark I want to use is already being used as a domain name?

Every website is identified by a unique phrase known as a "domain name." For example, the domain name for Nolo is Nolo.com. Because so much business is now being done online, most people will want to be able to use their proposed mark as a domain name so that their customers can easily locate them on the Web.

You can search domain names being used by Web-based businesses at any domain name registrar. You can find a list of domain name registrars at ICANN.org, the organization that administers registrations (http://www.icann.org/registrars/accredited-list.html).

If my trade name is registered with the Secretary of State as a corporate name or placed on a fictitious business name list, does that mean I can use it as a trademark?

Not necessarily. When you register a corporate name with a state agency or place your name on a local fictitious business name register, there is no guarantee that the name has not already been taken by another business as a trademark. It usually means only that another company hasn't registered the same corporate name in your state or the same fictitious business name in your county.

Before you start using your business name as a trademark, you will need to make sure it isn't already being used as a trademark by another company in a context that precludes your using it -- in your state and possibly even in the United States as a whole.