After you've narrowed the field to, say, four or five business names that are memorable, expressive and can be read by the average kindergartner, you are ready to do a trademark search.
Must every name be trademarked? No. Many small businesses don't register their business names. As long as your state government gives you the go-ahead, you may operate under an unregistered business name for as long as you like--assuming, of course, that you aren't infringing on anyone else's trade name.
But what if you are? Imagine either of these two scenarios: You are a brand-new manufacturing business just about to ship your first orders. An obscure company in Ogunquit, Maine, considers your name an infringement on their trademark and engages you in a legal battle that bankrupts your company. Or, envision your business in five years. It's a thriving, growing concern, and you are contemplating expansion. But just as you are about to launch your franchise program, you learn that a small competitor in Modesto, California, has the same name, rendering your name unusable.
To illustrate the risk you run of treading on an existing trademark with your new name, consider this: When NameLab took on the task of renaming a chain of auto parts stores, they uncovered no fewer than 87,000 names already in existence for stores of this kind.
That's why even the smallest businesses should at least consider having their business names screened. You never know where your corner store is going to lead. If running a corner store is all a person is going to do, then, he doesn't need to do a trademark search. But that local business may become a big business someday if that person has any ambition.
Ensuring that your name is going to be federally registerable is important. Also make sure that the individual states that you want to do business in will let you do business under that name. Enlisting the help of a trademark attorney or at least a trademark search firm before you decide on a name is highly advisable. The extra money you spend now could save you countless hassles and expenses further down the road. Try to contain your excitement about any one name until it has cleared the trademark search. It can be very demoralizing to lose a name you've been fantasizing about.
There are many misconceptions about trademarks and service marks and the level of protection provided for them under the law. One of the first misconceptions is that a trademark is all-encompassing. In fact, trademarks and service marks are filed under a specific class or classes. (For a complete list of eligible classes, visit the "International Schedule of Classes of Goods and Services" at the USPTO website.) There are 45 classes to choose from when filing for a trademark or service mark. Companies can file under one class or multiple classes depending on the nature of their product or service.
For instance, if a company has a registered trademark under class 15, musical instruments, another company using that same name in the pursuit of doing business in the category of musical instruments would potentially cause confusion in the marketplace and infringe upon a registered trademark. However, if a company does business within a different class, say class 1, chemicals, the potential for confusion would be extremely unlikely.
Conducting Your Own Trademark Search
If you're going to search on your own, the Patent and Trademark Depository Libraries (PTDL) nationwide have directories of federally registered trademarks and an online database of registered marks and pending registration applications. You can also use product guides and other materials available in these libraries to search for conflicting marks that haven't yet been registered. The U.S. Patent and Trademark Office's (PTO) website lists PTDLs in your state.
The site also has a free database of pending and registered trademarks; these are usually entered in the PTO database one to two months after filing. You can also contact the PTO at (800) 786-9199 for general information about trademark registration or to ask about the status of specific trademark applications and registrations.
It's also a good idea to search the web and see if anyone is using the name without having registered it. Do this with more than one search engine for the most thorough results. Also, check with domain name registrars like Network Solutions to see what's available. This can help you find other businesses using your chosen name or similar names, and it can also help you narrow down your choices. If you can't have your top choice of a business name as a .com domain, you might want to consider alternative spellings, choices or top-level domains (i.e., ".net" or ".us").