First, there is no formal, statutory requirement to conduct a formal trademark search before applying to register a trademark. However, there is little to no reason not to research a brand or company name prior to investing time and money into promotion, signage and advertising.
Anyone contemplating launching a new brand should at a minimum, search the USPTO’s Trademark Electronic Search System (TESS) for trademarks that are similar to the one you want to use paying attention to the description(s) of the good(s) and/or service(s) listed with each entry. In addition, searching your state’s trademark registration database for similar marks is a good idea. Some states make searching online really easy and some do not. I have begun compiling a list of on-line state trademark databases here.
In addition to searching for registered trademarks, it is wise to search for other, unregistered uses of similar marks as well. Obvious resources include Google and domain name registry databases. In addition, most, if not all, states also maintain a database of registered company names. It can also be possible to search assumed name listings in any country in which you know you will be operating.
There are search services out there that will conduct a thorough search of these databases for you for a reasonable price – $300 or so. If these reports reveal an obvious conflict then you will have saved significant money by reviewing the report on your own. However, as important as searching for similar marks is an understanding of how the USPTO and the Courts will view one trademark in light of another. Moreover, assessing the likelihood that an application will result in a successful registration also requires an understanding of the trademark registration process. For example, the USPTO will not resolve or analyze priority conflicts during the registration process leading to situations in which someone who has not even put their trademark into use blocking the registration of someone that has used the same mark for years.
There is another strong reason to conduct a thorough trademark search prior to filing an application for registration results – applications are public record from the moment they are filed. Companies with large budgets devoted to enforcing their trademarks monitor applications that are filed and send cease and desist letters to applicants during the registration process. This is an even larger risk for trademark owners that have been using their mark before they applied for registration. In addition, the USPTO allows outside parties to challenge any application that is filed through an opposition proceeding.
Trademark law is a nuanced area of the law and it helps to have an experienced guide. Contact a qualified professional to discuss your individual legal needs.