Tobias Renner

Pro edition

Search Method.

About 4.1 hours per mark across six places, in this order. Half of what it finds never appears in a register, which is the whole reason a designer does this at all rather than waiting for a database.

Not legal advice

I am a designer, not an attorney. What I do is a knockout search — federal register, state registers, common-law use and domains — which finds the obvious collisions early and cheaply. It is not a clearance opinion and it is not legal advice. A clearance opinion comes from a trademark attorney, it costs money, and it is on the fee table below because it belongs there.

Six places, in order

The last two are not trademark questions and they decide real things
WhereTimeWhat it can and cannot tell you
The federal register 45 min The obvious one. Search the sound and the meaning, not the spelling — a mark that sounds the same is the same mark for most purposes, and a design that means the same thing frequently is too.
State registers 30 min Two or three states around the client. Cheap, badly indexed, and the source of about a quarter of everything I find.
Common-law use 90 min Business directories, review sites, local press, the phone book equivalents. An unregistered business trading in the same state can stop you and will never appear in a register.
Image search, three ways 45 min The drawing, a described version of the drawing, and the idea in words. Reverse image search is the weakest of the three because a redrawn version of the same idea is not a visual match.
Domains and handles 20 min Not a trademark question and it decides real things. A name whose domain is parked at $12,000 is a name with a cost attached to it.
The typeface EULA 15 min About half of display faces exclude logo use. Fifteen minutes, and the alternative is a licence conversation after the vinyl is cut.

Writing it up without giving an opinion

  1. Describe, do not concludeWrite what was found and where. Never write "this mark is available" — that is an opinion, it is not yours to give, and it is the sentence a client will quote back.
  2. Date and scope every searchWhich registers, which states, which day. A search is a photograph of a moment and the register changes weekly.
  3. Screenshot the collisionsThe record entry, the local business page, the parked domain. A finding without a screenshot becomes a memory within a month.
  4. Rank by what it would costA live federal registration in the same class is a different order of problem from a similar name in an unrelated trade. Say which is which rather than listing everything flatly.
  5. Name the residual riskExplicitly: what a designer’s search cannot see. It reads as weakness and it is the most valuable paragraph in the document.

Six ways a search gives false comfort

  1. Searching only the spellingTrademark similarity is about sound, appearance and meaning. Two marks spelled differently that sound identical are usually the same mark.
  2. Searching only in one classRelated classes matter and class 35 catches almost everybody. A retailer’s mark can collide with a manufacturer’s.
  3. Treating an empty register as clearThe register shows registrations. It does not show the shop three towns away that has been open since 2004.
  4. Searching after the presentationThen a search finding is a withdrawal, which is a much worse conversation and produces pressure to ignore it.
  5. Searching onceBetween search and filing there are weeks. Re-run the federal search the day before the application goes in; it takes twenty minutes.
  6. Believing a free tool’s summaryThe "available!" badge on a search site is a marketing device attached to a filing product. Read the results, not the verdict.

When to stop and call an attorney

Five situations. In every one of them the honest thing a designer can do is say the word “attorney” and mean it.

The mark is going on a building
Attorney. The cost of being wrong is a sign order, not a logo file.
The business is raising money
Attorney. Diligence will ask for a clearance opinion and not having one is a discount.
A collision is close but not exact
Attorney. "Close" is precisely the judgement a designer is not qualified to make and an examiner is.
Anything crossing a border
Attorney, and a different one per jurisdiction. Nothing in my search applies outside the US.
A cease-and-desist has arrived
Attorney, today, before replying to anything and before changing any files.