Registered and Unregistered Trademarks
Trademarks can be either registered or unregistered. A “registered” trademark has been recorded on an official federal government database. Conversely, an “unregistered” trademark is not on such a registry.
Searches for registered trademarks can be done on the CIPO trademarks database, which is accessible on the Internet. However, it is necessary to search both exact matches and sound alikes. See the section below on exact matches and confusing marks.
Searches for unregistered trademarks are more difficult to carry out, since they involve a far wider scope then just registries. Whether someone else’s trademark is registered or not,, you may face legal action for trademark infringement if you attempt to use a trademark someone else is already using. Therefore searches outside the registries (often called “common-law” searches) are very advisable.
Corporate, trade names and business names should also be searched.If someone is using a confusingly similar name, they may be able to sue you and block your application for a trademark registration.
Exact Matches and Confusing Marks
A search for an exact character match is relatively straightforward. The search for what in law are known as “confusing” trademarks or business names is much more difficult and time consuming, as many different variations must be reviewed and researched. A confusing trademark may look or sound like the one you are proposing, and if so, it is just as much an obstacle to your registration as if it were an exact match. For example, if you searched “Coca Cola,” you would quickly find it is trademarked. But if you were to search for an exact character match for “Koka Kola,” you may not find it on the trademark registry. Nevertheless, you would not be permitted to trademark or use “Koka Kola.”
A search for confusing trademarks is therefore just as important as the search for exact matches. In fact, one of the most common reasons for rejection of an application is that the Trademark Examiner believes it to be “confusing.” Most of our searches are based on algorithms that also search for confusingly-similar marks.
There are many types of searches, including those you can do yourself on the Internet for free. First, you will have to structure the search query properly. This can be a challenge when you have to look for sound-alikes too.
Once you do have the search results, you have to filter them for ‘confusing’ trademarks or tradenames. ‘Confusion’ is a term of art in trademarks, and covers such things as field of business, channels of trade and the degree of resemblance in appearance, sound or ideas suggested by two trademarks.
Next: Where To Search