Conducting a Trademark Search
One of the things I want to make sure you do is vet the name for any business names or brand elements you want to use before you begin using them, so this is not super hard I'm going to show you how to conduct a trademark search, so the first thing you're going to do is go to uspto uspto dot gov slash tests this is the trademark the trademark office's search engine right? So you can put the name that you're thinking of using put it right in there and see if it's already registered if it's already registered, guess what? You cannot use it ok, you'd be infringing on someone else's mark, if it's already registered in the classes that are similar to your class of business, so let me give you an example of this s o, for example, when I was coming up with the name of small business bodyguard, the first thing I did was put it in the test system and see if someone already owned small business bodyguard and luckily, no one did, but let's say somebody did own small business bodyguard, but they o...
wn small business bodyguard for nail polish. Well, then I'd still be good to go because I'm not in the category of nail polish I'm in the category of like a digital product and, you know, business consulting and, you know legal information you know so I'm in different categories than that and so there wouldn't be confusion another example that you'll recognize is dove there's dove chocolate and then there's also dove soap right? So the reason why those two companies can co exist in the world is because no one who's looking to buy chocolate is goingto be confused and buy soap instead right? So it's pretty obvious that this is soap and this is chocolate so they're not competing those products directly but if the products were competing they couldn't use the same name all right so that's how I want you to think about it you can use a name that somebody else is using but on lee if it's in a separate class not in the same industry okay and the way you come up with classes is there's a you know category a catalogue the a list of you know it's called the identification in of goods and services which you know this is why I'm saying trademark registration is a little complicated for you to try to do on your own if you can ever do any legal work on your own I will always tell you I'll give you the tools to even do it yourself and make it easy for you but then there are some things that are just too complex and to take good care of your business you need to just spring to work with a lawyer for those specific items so the next thing you're going to d'oh so assuming you go to uspto dot gov slash tests and no one has used of the mark that you're thinking about using, then you go on to the next step if someone is using it and it's in the class that you wantto you know, register the market, then unfortunately you can't use it and you got to come up with another name. Okay, but that's way better, isn't it then, you know, using the name, buying the domain name, putting up a fabulous website, paying thousands of dollars to a designer to create all of your brand identity, announcing your name to the world, operating your business for six months and then getting served with the season desist from that company because they're pissed that you're registered that you're infringing on their trademark and then you've got to take it down. You either have to take it down or face a lawsuit. So now you lose all that goodwill you've built up, that customer recognition, the funds that you paid to develop that brand right so that would suck and I actually have an example of that and I'll share that with you, so you know better for you to vet that name right up front make sure that it's not infringing on someone else's mark ahead of time so you go to uspto dot gov slash test, and then next thing you're going to do is go to the secretary of state's website right in your state and maybe on any other state that your company has a presence in. So you just go to you know, if you google secretary of state california, the california secretary of state, will pop up and you'll see right on the home page there's usually something called business search so you can click business search, put in the name that you want to use and see if somebody else is using that name. All right, if nothing comes up, then you can move on to the next step. So then you go to search engines and you look at google, look at yahoo and look at being ok, you're not just gonna look at google, and you're not just gonna look at the first page that's not sufficient ok, so search for the name that you want to use and go through. You know what I'd recommend is all ten pages, the first ten pages of the google search is going to show you if there's anyone in your industry that is using that mark already, okay, so that's that's sort of step three, then you're in a search the white pages in the yellow pages. These are web sites that you can search right online and just make sure that you're not seeing it there either because there are businesses out there, believe it or not, that don't have an online presence. It's so it's possible that there might be a business out there using that very business name, and they own the trademark to it, but they're not online, so sometimes you can find them in the white pages or yellow pages. Another thing that I like to do is doing a domain name search, and this is something that business owners often do, so go ahead and put it into you know, my favorite search engine for domain names is named cheap dot com, so go there, plug in the name, plug in variations of the name, and see if you see anyone else using it if somebody else owns that don't mean, and then you'll be brought to their website, right? And it'll be pretty obvious that they are ready in business and so you can determine whether they're in the same industry is you. If they are, then unfortunately, you can't use the name you have to come up with something else, and I should also note that, you know, back here where you're going through a uspto dot co slash test, you should also check for example, smallbiz bodyguard right or entrepreneur, bodyguard or any sort of variation of small business bodyguard of the name that you want to use sorts of different variations to on google on the secretary of state's web site and on the white pages and yellow pages and the domain name search ok, so this is going to give you a more comprehensive search and then you also I like to add doing a search on amazon too, because then you can see if someone written a book on the topic and maybe has a business of the same name or has preserved the brand name because they've written a book on it, so check amazon to just for good measure. So this is how you do a basic trademark search all right and that's going to help you, you know, resolved ninety percent of all potential trademark infringement that you might encounter on dso then when you go through these steps, you know that no one else is using the mark. Now you know that you're in a position to sort of stake your claim on that brand. You'd put your flag up and know that people are going to recognize your business in the marketplace when they hear that brand name okay? And then you're going to go through the steps stir registered the trademark so here's a little story about somebody. Her name is kelly cat she is she shared her story of having to change her business name on her website. So she had a business called women wise marketing. And she had been in business for about two and a half years. And so she had just started to really build up that search engine optimization, right? You know, her business was trying to hum along. She started to have a nice following she's making a good chunk of change from the business. And then she got served with a cease and desist because she didn't get the name women wise marketing. And it turned out that there was another company who owned the trademark for women. Wise marketing. So guess what she had to do? She had to hand over the domain name she had. Teo, you know all that search engine optimization that she had created and built up. She had a hand that over that went to benefit a direct competitors. Andi it was really pretty devastating for her and then she had to redo her website should change the domain. Her customers had trouble finding her. So this is a huge disrupt into your business it's so much better to just bet the name right up front and avoid having this happen. So, here's what she said, you know, about that experience. Naturally, this situation has been overwhelming and emotional. I worked on the women wise marketing brand for many years and was finally starting to see good results after hundreds of hours of search engine optimization. Now that s you will go to benefit a competitor, and I'll be starting from scratch, don't let that be you avoid that mistake, okay? So I know how we're going to avoid that mistake by making sure you vet the name for any brand names you want to use. If it's a product, if it's the name of your business, if it's a new tagline, make sure you vet it first, and then you're going to register the trademark for that name logo tagline to avoid being liable for trademark infringement.