Naming in an AI Age
Join members of the NameStormers team as they explore the nuances of the creative nature of name generation, the mechanics behind trademark screening, and the importance of consumer research, with various guests featured along the way!
Naming in an AI Age
USPTO Trademark Search Pros, Cons, and Watch-outs
Before picking a business or brand name, check the USPTO’s TESS database to see if it's already federally trademarked. The basic search finds exact matches, while the expert search digs deeper for phonetic or visual similarities and class-specific conflicts. Still, TESS doesn't show common law trademarks, state registrations, or domain/social media use. Since trademark law hinges on potential confusion, missing a similar name could jeopardize your brand. In today’s fast-paced world, consulting an IP attorney is the best way to ensure your name is clear and protected.
Disclaimer: We are not attorneys and do not provide legal advice. We always recommend consulting an IP attorney.
Ashley Elliott (00:04):
Hello and welcome to naming in the AI Age. This week we're going to talk about trademark. If you're starting a business or launching a brand, before you fall in love with the name, you really need to see if it's already registered as a federal trademark. So today I'm going to show you how the USPTO search tools actually work. Disclaimer, I'm not a trademark attorney. We don't give legal advice. We always recommend using an IP attorney specifically when you're vetting for trademark. But let's get started. So step one, you'll go to the USPTO database, also known as tess, TESS. So they have two different types of searches. There's the basic search. Think of this like a Google search for trademarks. You type in the name you want, it shows you the exact or similar matches. It's good for a quick check for obvious conflicts, but it's pretty limited.
(00:52):
For example, I searched for zingo, one of my kids' favorite games, zingo, with the basic search, and I was able to filter and then turn off the dead and abandoned trademarks because those really don't affect me since they're no longer in usage. But note that trademark law is based on likelihood of confusion. So the basic search may miss trademarks with similar meaning or similar sounding terms, but spelled differently. Why be basic when you can be an expert? That's why I'd recommend the expert search. This lets you look at more specifics. You can find phonetic equivalents, visual similarities. You can filter down by detail such as class of goods and services. More on that to come. But for example, I'll search with expert search. I can look at phonetic similarities to zingo as well as search by specific classes. Most people do the basic search or even the expert search, see nothing that they think is a problem, and they think they're going to go.
(01:49):
Do not do this. It's important to remember the USPTO doesn't show you certain things. It doesn't show you common law trademarks. Brands that are used and in use but not registered. Those brands are specifically entitled to certain usage rights. There's state level trademarks that are protected only within the state. It doesn't show any of those registrations, and it doesn't show you social media handles or domain name availability. So if you're really serious about protecting your brand, do more than just a USPTO search. It's a good start, but don't stop there because in the AI era, your name travels fast. Make sure it's truly yours before you build on it. Or better yet, work with someone who knows what to look for, such as an IP attorney. Missing one trademark could really cost you your whole brand later. That's it for this week's naming in the IH. Tune in next week as we dive in a little deeper.