It should be noted a state business entity name search, such as the Florida Department of State conducts prior to accepting a business entity filing (corporation, L.L.C., P.A., etc.) is NOT a trademark search, and conveys no trademark rights. The Florida Department of State business entity name search merely checks for identical name matches, not ones your new name may infringe.

The standard for trademark infringement is “likelihood of consumer confusion”. Thus, a non-identical mark which merely sounds similar to another may infringe, given certain other conditions are met, such as similarity of goods and/or services, etc. The Florida Department of State may, and routinely does, accept business entity filings bearing names which are confusingly similar to existing business names, and the junior user may then find itself the recipient of a cease-and-desist letter.

Nor is a quick search of the Patent & Trademark Office records a pre-examination trademark search, because most marks are not federally registered. To the contrary, a check of the Trademark Office registrations is only the “tip of the iceberg”. The large and indispensable bulk of the trademark search is the “common law” part of the search.

The common law part of the pre-examination trademark search includes sources such as trade, industrial and publications databases, full-text articles, indexing and abstracting of hundreds of popular magazines, business directory databases, state trademark registrations, and international trademarks.

For example, a typical pre-examination trademark search may include State Trademark Registrations, International Trademarks, Trade, Industrial and Publications Databases, which contain indexing, abstracting and selected text of hundreds of trade journals, as well as selective coverage of business and trade information from almost 1,200 additional publications. Also, a directory of over 180,000 public and private U.S. and Canadian companies, classified under more than 53,000 product classes and more than 115,000 brand names.

Additional search sources include indexing and abstracting of more than 500 popular magazines, combined with full text availability of over 100 publications, provide extensive coverage of current affairs, the performing arts, business, sports, recreation and travel, consumer product evaluations, science and technology, and leisure time activities, and Business Directory Databases which include over twelve million public and private businesses and professionals throughout the United States engaged in agriculture, business services, communication, construction, finance, insurance, manufacturing, mining, professional services, public administration, real estate, retail, utilities, and wholesale activities, and a worldwide directory of over 282,000 consumer brand names and their owners.

Thus, if the Client feels so inclined, the Client may perform quick name checks at the U.S. Patent and Trademark Office www.uspto.gov web site. Such quick checks serve as a screening process prior to ordering the full search.

The prudent course of action is to have a trademark search conducted prior to adopting a name. After the search clears the mark, use of the mark may be commenced, and if appropriate, either a state or federal registration may be applied for. Regardless of whether registration is contemplated, however, it is highly recommended that a trademark search be conducted prior to commencing use, or as soon thereafter as is feasible, for the above reasons.

State and Federal Registrations.

A state registration may be procured for a mark which is applicable within the state of registration. Many state registrations are based on state statutes which parallel the federal trademark statutes.

A federal registration enhances the rights of a trademark user nationwide. Two registers are provided at the federal level: the Principal Register, and the Supplemental Register.

Federal Registration - Principal Register.

Marks which are arbitrary or fanciful, suggestive, or descriptive marks which have acquired secondary meaning (consumer name recognition) may be registered on the Principal Register. Benefits of registering on the Principal Register include prima facie evidence of the validity and ownership of the mark, prima facie evidence of usage of the mark since the filing date of the application, constructive notice nationwide of the registrant’s claim of mark ownership, qualified nationwide rights, access to the federal courts to bring suit, statutory remedies, the ability to bar importation of infringing goods, and international rights under the Paris Convention.

Federal Registration - Supplemental Register.

Descriptive marks which are capable of acquiring secondary meaning, but which have not yet so done, may be registered on the Supplemental Register. Registration on the Supplemental Register confers many, but not all, of the benefits of registration on the Principal Register: deterrent value against registration by others (the ® symbol may be used and the registration acts as a bar against registration of marks likely to cause confusion), the owner may register abroad based on his United States registration, and the owner may bring suit in federal court. Some of the benefits of registration on the Principal Register are not available (prima facie evidence of the validity of registration, ownership and right of exclusive use, “incontestability” after 5 years exclusive continuous use, nationwide rights, etc.).

After five years of exclusive continuous use, the mark is presumed to have acquired distinctiveness, and (barring unforeseen circumstances) the mark may then be registered on the Principal Register. So with any luck, transfer of an application from the Principal Register to the Supplemental Register would merely mean a delay in securing registration on the Principal Register, during which time the mark would be registered on the Supplemental Register, with the benefits such registration entails (listed above).

Registration Procedure.

The application for registration of a mark at the U.S. Patent & Trademark is similar to that of applying for a patent. First an initial consultation is conducted, to assess the protectability and registrability of the mark. If the mark appears eligible to use, a pre-examination search is conducted. Then, if no conflicts surface, application is made at the U.S. Patent & Trademark Office, or at the state level, for registration.

If a registration is ultimately granted, it is important to remember that certain filings must be accomplished at various times after the registration date. For example, both federal and state trademark registrations must be renewed ten years after registration. In addition, a Declaration of Continued use must be filed between years five and six of federal trademark registrations or the registration will be cancelled, and it is recommended that a Declaration of Incontestability be also filed at that time.