Knock-out Searches

Before adopting a trademark, it’s wise to carry out various kinds of searches on that mark. You’re trying to find out, as best as you can, whether someone else has already adopted the mark for their business.

However, all too often, calls come in where the process has been reversed: the trademark owner has chosen their mark and finalized all their domain registrations and possibly even their corporation name, and it’s only at that point that they turn their mind to finding out whether their chosen mark is in fact available as a trademark.

It’s a roll of the dice doing things that way. Sometimes their mark will be available; other times, that work and expense will need to be thrown away.

The lesson: it’s your trademark rights that protect your domain name, not the other way round.

That said, I recognize it’s easy, cheap and quick to register a domain name. But do take a moment to at least do some knock-out searches before falling too much in love with your chosen domain name.

The safer kind of trademark search is, of course, to do a paid search. We can help with that.

But, on your own, at least a minimal level of knock-out searching can be done, for free. To do your own knock-out trademark searches, consider these resources:

• Canadian Trade-marks Database: Pay attention to the Help links there. In a certain sense, the database is not a sophisticated search algorithm; it will miss obvious duplicates. So be sure to search various combinations of singular versus plural and commercial misspellings (such as “whyte” for “white”).
• United States Trademark Electronic Search System (TESS): Click through on the “Search Marks” link. TESS offers basic, structured and free form trademark searches in the US federal trademark database. Read the tips and extensive help.
• In the US, each state also maintains a trademark registry. Paid services can access all the state trademark databases. In many states, you find the Secretary of State webpage and go from there. Here’s someone’s web page with links to all the states (we don’t vouch for that information).
• Google and other search engines, of course. Go broad.
• Telephone directories, both online and paper.
• If you can get access, publications directories. Many public libraries offer access to their cardholders; for example, the Vancouver Public Library.

I caution that here at little knowledge is a dangerous thing. Even doing these free searches is a skill to be learned. Moreover, as large as the internet is, it is still much smaller than the world, and it is both the internet and non-internet world that the prospective trademark owner needs to think about.

To avoid disappointment, hold your trademarks lightly until they’ve been registered or otherwise established through a sufficiently long period of usage.