Intellectual property tends to be a land of first come-first serve. Patents are only awarded to inventions that are new and non-obvious, which means your invention isn’t the logical next step based on what is already out in the world. Trademark protection looks at what marks potential customers have come into contact with in connection with the product first. Your put your mark on bunny slippers first, you start earning your trademark rights then and there. That means if you are second in line, you may be precluded from gaining those rights. In fact, you may have to give up your use and come up with something else.
There are essentially two ways of going about determining if you are first and have the ability to go forth. One, you can just start using your trademark, and see if you get cease and desist letters or file an application with the USPTO and see what they dig up in the process. If you are in the clear, you are on your way to protection. If not, well, you just spent money on attorneys and filing fees to be told that you get to do it all over again – not to mention if you paid for signs, stationery, etc. Fingers crossed!
Or two, you can do some clearance or freedom to operate searches to see what is already out there. If there is something too close, time to go to plan B (or C or D). If you are in the clear, you know just how big of a swath you can claim in your application. You have paid for a search (maybe multiple), but only one application that will go forward.
As for the search, we like to think we are worth the money to help you sort this out, but that doesn’t mean you have to start with us. In fact, you probably shouldn’t. The internet is a wonderful thing so take some time and weed out the truly bad ideas, and bring us the best of the best. Then we can really crush your heart when we say no. So where do you start?
For trademarks, Google (or Bing or whatever your search engine of choice is) can be a great start. Put your proposed mark and proposed product or service in the search box and go as far down the search results as you think your customer will. A bit of warning, almost all searches will end in porn if you go far enough. If you are on page 10, and hit it, then think about how many customers will go that far trying to find you (not many). If you are on page 1 or 2 and find the XXX sites, well, then you will want to decide how closely you want to align with that industry (we don’t judge).
Next, see what others have already registered. Go to the USPTO’s trademark search engine, TESS, to see what is registered or applied for with the federal government. The Wisconsin Department of Financial Institutions houses the Wisconsin trademark database. Look at different spellings. SPANKS and SPANX are not different enough to avoid the infringement allegations.
Finally, if there are specialty sites you expect your customers will visit, go visit them, too. For example, craft brewers should check out their newest beer name at sites like and RateBeer.
If these all clear, then a paid search (either through an attorney or something like ActiveIP) may be helpful or perhaps not, depending on your mark, industry, budget and expectations. If you think all of this is too expensive or time consuming, you should try rebranding. Trust me from seeing others mistakes, these prior searches are the way to go.
With patents, you can try going to the USPTO’s patent search site. If you can make it work for you, you are better than most. Google Patent tends to be much more user friendly. If nothing else, you can usually get the patent number to then go to the USPTO for more information. Again, even regular Google is your friend. See what other people are discussing and selling. Finally, the paid search can be huge time and money saver. Not only can it prevent you from spending more on a dead end, it can help your patent attorney figure out where and what to claim.
Not every trademark and invention needs a full-blown freedom to operate search and opinion. But even with your home-grown searches, you can discuss it with your attorney in a much more knowledgeable way and make an educated decision about going forward instead of forging ahead into the abyss blindfolded.