How to do preliminary trademark screening on name ideas

Note: I am not an attorney. This article about preliminary trademark screening is for informational purposes only. It should not be construed as legal advice for any individual matter, nor does it create an attorney-client relationship between you and me (the author) or the publisher. For further questions, I strongly recommend you speak to a licensed attorney who is familiar with trademark law.

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Preliminary trademark screening, sometimes called “prescreening” or a “knockout search,” is a standard step in the brand naming process—or, at least, it should be. Even most casual observers of branding loosely understand the risks of accidentally going to market with an “unavailable” name. They often oversimplify, however, thinking, “you’ll get sued for trademark infringement!” and forgetting that many brands use identical names, although for different products or services (e.g., Dove soap versus Dove chocolate).

While just about anything can result in a lawsuit, more likely risks include the following:

• The United States Patent and Trademark Office (USPTO) might reject the application, resulting in wasted time and money.
• If the name is used and, as a result, a third party feels the need to protect their trademark, you’ll likely receive what’s called a “cease and desist” letter (basically a note that says, “Stop using that name, or we’ll sue you”).
• You could receive a cease and desist immediately, but it’s also possible—and maybe far worse—you’ll receive it years later. Imagine how expensive, time consuming, and embarrassing it can be to have to change a brand name after years of investment.

To avoid these pitfalls, namers (and their clients) should insist on legal searches as a critical step in brand naming. Preliminary trademark screening is built into most naming processes because asking a lawyer to do a “full search” on a name can require too much time and money.

Professional namers will often generate hundreds of name ideas throughout the course of a naming project, dozens of which might be considered strong candidates. Rather than conducting full legal searches on all of them, namers subject a shortlist to faster, less costly searches. A business owner, brand consultant, or preliminary trademark screening expert (see below) pores through publicly available trademark databases and other sources to narrow the list of potential names by “knocking out” those with obvious legal challenges—those that are too similar to relevant, existing trademarks. Including the prescreening step ensures that only those names with a higher probability of “success” (upon deeper searches by a trademark attorney) continue through the naming process. Prescreening can also help prevent a worst-case scenario: having to return to a client or team, hat in hand, and deliver the news that the name everyone’s fallen in love with is a legal quagmire.

 

The easy way to do preliminary trademark screening

The easiest way to do preliminary trademark screening is to call for backup. That is, simply send your shortlist of name ideas to a professional trademark screening expert. Honestly, this is how I manage prescreening most of the time. As you’ll see below, prescreening names takes a lot of time and patience. And determining whether to knock out a name is rarely black and white; I prefer to rely on the expertise and experience of these specialists. Lastly, outsourcing this step is pretty cost-effective!

I’ve worked with all three of the following professional prescreeners, and highly recommend all of them:

1. Steve Price served as a trademark research consultant with Lexicon Branding for over 18 years. He now runs Tessera Trademark Screening. Steve was also a guest on season one of the How Brands Are Built podcast.
2. Angela Wilcox has been practicing Intellectual Property Law for over 20 years and provides preliminary searches through her firm, Wilcox IP.
3. Perry Gattegno leads the Trademarks and Branding practice at Litwin Law, where he represents branding, naming, and design agencies. He’s also a frequent contributor to the How Brands Are Built blog.

 

How to do your own preliminary trademark screening

Still want to do it yourself? If you’re only checking a handful of names or your budget is virtually nonexistent, you can learn a lot about the potential availability of your name ideas without any outside assistance. And, even if you’re working with an expert, you’ll benefit from a basic understanding of what they’re doing. Below, I’ve listed steps anyone can take to run preliminary trademark checks on name ideas. Bear in mind, however, that any proposed brand name should undergo a full clearance search by a trademark attorney before use.

The goal of conducting a preliminary trademark search on a given name idea is to find out whether other companies are using an identical or similar mark for similar goods or services. Prescreening can include the following steps:

1. Check the U.S. Federal trademark database for identical names in all international classes.
2. Check the U.S. Federal trademark database for similar names in international classes relevant to the goods and services of the project.
3. If relevant, screen trademark registers outside the U.S. for identical and near-identical names.
4. Search online for identical and similar names used for identical and similar goods and services.
5. Visit relevant domains for identical and similar use.

You can conduct these steps as “stage gates,” in that searches for each name can stop as soon as you find something sufficiently problematic to make continued searching unnecessary. I.e., if you find a confusingly similar trademark for a competing product in the U.S. Federal trademark database (step one), no need to check foreign registers or do a Google search. To keep yourself organized, create a simple spreadsheet with name ideas on the left and a column for each step in your screening process.

 

Searching the U.S. Federal trademark database

To search the U.S. Federal trademark database, use the USPTO’s Trademark Electronic Search System, or “TESS.” Access TESS by searching for “uspto tess” or visiting this link and clicking the “Search our trademark database (TESS)” button in the middle of the page.

• Select “Basic Word Mark Search (New User)” to get started.
• To exclude dead and abandoned applications, select “Live” (leave the other options as they are).
• Type your query (see below) into the “Search Term” field.
• Press the “Submit Query” button.

 

Depending on the project, your first query might be nothing more than a name idea. If the search returns any results from the database, you’ll see a screen that displays the number of records found and lists the results. Above the list of results, you’ll see a “Refine Search” field, where your query will have been replaced by something that looks a bit like code.

For example, let’s say we’re trying to come up with name ideas for a new, fruit-flavored candy.

Our first query might be “Nektar” (one of our name ideas), in which case 14 records are returned (at the time of this writing) and the “Refine Search” field contains the following:

(live)[LD] AND (nektar)[COMB]

This “code” means you’ve searched TESS for live marks containing “nektar.”

To narrow down the results, determine which international classes are most relevant for your project. The USPTO lists international classes on its website, but some of them are quite outdated, which can make it hard to tell which classes are applicable. An easy shortcut is to look up the registered trademarks of your (potential) competitors to see which classes they’ve registered in.

For our candy brand, we could look up Skittles and Haribo and find they’re registered in international class (IC) 30, among others. We can then refine our search by adding “AND (030)[IC]” in the Refine Search field:

(live)[LD] AND (nektar)[COMB] AND (030)[IC]

Now, only one result comes up: Nektar Honey Crystals, described as “honey; granulated honey; natural sweetener.” It’s not fruit-flavored candy, but in my (non-lawyer) opinion, it’s close enough for concern. Maybe you’re thinking, “But honey isn’t the same as fruit-flavored candy.” True, but put yourself in the shoes of that other company—would you be upset if a candy company started calling itself “Nektar”? Or imagine you’re an avid consumer of Nektar Honey Crystals (whatever those are) and one day see Nektar brand candy at the grocery store—might you draw a connection between the two? Avoid magical thinking here; just because you know your product is nothing like theirs doesn’t mean anyone else will jump to that conclusion.

Besides, had I continued, I would’ve soon found multiple candy brands using the name “Nectar,” and a slight variation in spelling probably isn’t enough to avoid customer confusion. Regardless, had I not found any problematic “Nektar” or “Nectar” marks, I could have—and probably should have—expanded my search to include alternative spellings like “Neqtar” or “Nektr.” While I’m at it, maybe I should also expand the search to related goods and services, like soft drinks, just in case. And now you’ll start to see how complex TESS searches can become:

(live)[LD] AND (ne?t{V0:1}r)[COMB] AND ((030)[IC] OR (032)[IC])

The question mark in the code above allows for any one character between “e” and “t.” The “V0:1” within curly brackets allows for up to one vowel—or nothing at all—between the “t” and “r.” The “OR” toward the end of the query ensures results from both the food class and the “Light beverages” class, which includes soft drinks. Another code that may come in handy is “[GS],” which allows you to search by specific goods and services rather than broad industry classes:

(live)[LD] AND (ne?t{V0:1}r)[COMB] AND (candy)[GS]

Having fun yet? The USPTO provides lengthy, additional instructions on how to search their database. Have at it.

 

Remaining steps

For name ideas that still appear relatively “clean” once you’ve searched the U.S. Federal trademark database, you can continue by looking at international equivalents, if relevant. Lastly, you can type the name ideas into a search engine, being sure to check alternative spellings, pairing the names with relevant keywords (e.g., “nektar candy”), and—as a final safeguard—checking the exact domain (e.g., nektar.com).

Based on all your searches, assign each name a “score” to remind yourself whether you think the name is worth pursuing further. Steve, at Tessera, marks each name idea as a “Go,” “Maybe, “or “Maybe not.” Others use letter grades, high/medium/low, or something like a traffic light system. Once you’ve scored your name ideas, you’ll have an even shorter list of name ideas—perhaps a list of “greens” and “yellows”—ready for the next step in your naming process.

Special thanks to Perry Gattegno for reviewing and suggesting edits to this article.

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Rob Meyerson is a brand consultant, professional namer, and host of the How Brands Are Built podcast. He is also principal and founder of Heirloom, an independent brand strategy and identity firm in the San Francisco Bay Area.

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