U.S. Trademark Search Guide

⚠️

The Tale of Two "Apples"

The Beatles' Apple Corps and Apple Computer waged a 30-year legal battle that ultimately cost the tech giant approximately $500 million to secure their name. This cautionary story highlights a crucial truth: comprehensive trademark searching isn't bureaucratic red tape—it's your brand's most critical first investment.

Two Realms of Trademark Protection

Federal Registration (®)

  • Scope: Nationwide protection across all 50 states.
  • Strength: Legal presumption of ownership, easier federal court enforcement.
  • Source: Proactive grant by the U.S. Patent and Trademark Office (USPTO).

Common Law Rights (™/℠)

  • Scope: Limited to specific geographic areas where the mark is actively used.
  • Strength: No legal presumption; must prove rights' existence and scope in court.
  • Source: Automatic acquisition through commercial use only.

A prior, geographically limited common law right can block a federal registration. You must search both realms.

Distinctiveness Spectrum: How Strong Is Your Mark?

Not all trademarks are created equal. Their inherent strength determines the level of legal protection they can obtain. Stronger marks are easier to register and protect.

Comprehensive Search Process

🏛️

1. USPTO Database Search

Search the official database for registered and pending federal marks.

🌐

2. Common Law Search

Scour the internet, social media, state databases, and industry publications.

⚖️

3. Analyze Likelihood of Confusion

Assess whether your mark is confusingly similar to others based on key legal factors.

The Ultimate Test: "Likelihood of Confusion"?

This is the final arbiter. Courts and the USPTO use the "DuPont Factors" to make this determination, with the first two factors being most critical.

Factor One: Similarity of Marks

How similar are the marks in sound, sight, and meaning?

Factor Two: Relatedness of Goods/Services

Are the products/services related or sold to the same consumers?

Real-World Experience

Booking.com

A "descriptive" term can become a strong trademark if consumers recognize it as identifying a specific brand (i.e., acquiring "secondary meaning").

Adidas vs. Skechers

Protection can extend beyond names to the overall appearance of products ("trade dress"). Intentional copying is strong evidence of infringement.

Victoria's Secret

Famous marks receive protection against uses that, while not confusing, may tarnish or dilute the brand's reputation.

Ever Vigilant: Avoiding the Genericide Graveyard

A trademark's greatest threat is becoming the generic name for a category of products. You must actively monitor and protect your mark's distinctiveness.

Victims of Genericide:

  • 🪦 Aspirin
  • 🪦 Escalator
  • 🪦 Thermos
  • 🪦 Trampoline

Always use your trademark as an adjective (like "a Kleenex® brand tissue"), never as a noun or verb.