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One legal requirement for registering a trademark in the U.S. is that the new proposed trademark be unique for the associated trademark Class. This means that the proposed trademark cannot be the same as OR confusingly similar to an existing registered trademark for the associated trademark Class. The trademark Class matters because it is possible for the same trademark to be registered to two different persons/entities but in wildly different Classes. DELTA is a good example since the wordmark used with airline transportation is different from the word being used with bath and kitchen plumbing fixtures. There is no likelihood that consumers would confuse the trademarks used on such very different products.
When trying to ensure the availability of your proposed trademark, the process is called “doing a trademark search.” When first doing a trademark search, it is probably simpler to not worry too much about the trademark Class. It is generally business-wise to conduct a trademark search well in advance of making marketing and branding strategies because it is possible your proposed trademark is already in use. Often, it is easier and less expensive to create a new proposed trademark. Moreover, sometimes the proposed trademark only needs some tweaking to make it sufficiently different from any existing registered trademark.
Every trademark search starts with an online search engine. This is the quickest and least expensive way to find every obvious trademark conflict. While this works best for trademarks that are words or phrases, it can also locate trademarks that are designs or logos. Generally, online search engine queries should not be deemed sufficient.
The next common step is to access and search the trademark database operated by the U.S. Trademark Office. The search engine is very good and is designed to allow searches for designs and logos. For example, if your proposed logo has a hawk or eagle as part of the design, there are ways of searching specifically for designs/logos containing hawks or eagles. The Trademark Office’s database contains all registered trademarks, all expired or lapsed registrations and ones that were denied or abandoned.
For an even more complete and exhaustive search, the next step is to search the trademark databases at the state levels. Trademarks can be registered at the federal and state levels. Each state will have a database similar to the one maintained by the federal Trademark Office. Searching all the state databases will be time-consuming, but it may be worth it to ensure availability. The value of doing state-level trademark searches has increased in the last few years as more and more states have legalized personal use of cannabis. Since cannabis is still illegal at the federal level, cannabis-related trademarks cannot be registered at the federal level. This has led to a huge upswing of state-level trademark registrations as many cannabis businesses have been forced to register cannabis-related trademarks at the state level.
A comprehensive trademark clearance search goes beyond confirming that your exact mark does not appear in the USPTO’s database. Because trademark law protects against confusingly similar marks — not just identical ones — a proper clearance search requires analyzing phonetic equivalents, visual similarities, meaning equivalents, and goods and services classifications with an expert eye.
The legal standard for trademark infringement — and for the USPTO’s refusal to register a new mark — is likelihood of confusion. The USPTO and federal courts apply the so-called DuPont factors (from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)) to analyze whether two marks are confusingly similar. The most heavily weighted factors are the similarity of the marks and the relatedness of the goods and services. But all 13 DuPont factors can be relevant in a given case, including the channels of trade, the sophistication of purchasers, the strength of the senior mark, and evidence of actual confusion.
This means that a search result showing that no one has registered “APEXO” for software tells you only part of the story. You also need to know whether “APEX,” “APPEXO,” “APEXIO,” and similar marks are in use — registered or not — for related goods and services. Experienced trademark attorneys use professional search reports that capture phonetic variants, design codes (for logo marks), and common law uses beyond what the USPTO database reveals.
After the basic online and USPTO database searches described above, a thorough clearance typically involves commissioning a professional trademark search through a provider like Corsearch, CompuMark, or Thomson CompuMark. These professional search reports typically include:
The raw search report itself can be hundreds of pages. An experienced trademark attorney then analyzes the results to identify the marks of actual concern — those that are close enough in sound, appearance, or meaning, and used on related enough goods or services, to pose a genuine risk of confusion — and provides a clearance opinion that tells you whether proceeding with the proposed mark is advisable, advisable with modifications, or inadvisable.
A trademark search is not complete without checking domain name registrations and major social media platforms. Under the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)), the owner of a distinctive or famous mark can sue a person who registers a domain name with bad faith intent to profit from the mark’s goodwill. But this remedy is reactive — it addresses cybersquatting after the fact. Before investing in a brand, confirm that the corresponding .com domain and key social media handles (Instagram, X, LinkedIn, TikTok, YouTube) are available or acquirable. A brand with a strong trademark but no matching digital presence faces a competitive disadvantage and potential consumer confusion.
Common law trademark rights — rights that arise from actual use of a mark in commerce, without registration — can also block a new application or give rise to infringement claims even when no federal or state registration exists. A professional search is designed to surface these common law uses, but it is not infallible. For high-value brands, searches should be supplemented with industry-specific research.
The trademark search should happen before you commit to a brand name — before you register a domain, order packaging, file a fictitious name, or invest in any marketing. The cost of a thorough trademark clearance search is modest compared to the cost of rebranding after a cease-and-desist letter, responding to a trademark opposition proceeding, or defending a federal trademark infringement lawsuit. The earlier the search, the greater the options available if a conflict is discovered.
Ready to confirm your trademark is available? Contact the Trademark attorneys at Revision Legal or visit our trademark practice page to schedule a consultation.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
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