How to Perform a Comprehensive Trademark Search for a Toy Brand

by JOSH GERBEN, founder and principal, Gerben Law Firm, PLLC

Before manufacturers register a new toy brand with the United States Patent and Trademark Office (USPTO), they should perform a comprehensive trademark search to determine if there are any similar trademarks already in use. The best way to do so is to avoid DIY searches and work with an experienced trademark attorney to search for any confusingly similar matches to your toy brand’s trademark.

The uniqueness of your toy brand is what will drive customer recognition and loyalty in the future. It may also determine whether your trademark can be registered. Before you invest time and money applying for trademark registration, take the time to complete a trademark search, paying special attention to the topics below.

The Reason for a Comprehensive Search

The USPTO will not grant trademark registration to a mark that may be confusingly similar to an existing mark. For this reason, it is imperative that you first perform a comprehensive trademark search of your toy brand. The purpose of the search is to determine if a similar mark exists, which may lead to a likelihood of confusion in the marketplace.

As a business owner who has worked hard to create a unique and memorable toy brand, it can be frustrating to learn that a similar mark already exists. However, it is best to learn this before you’ve paid your fees and submitted your application to the USPTO. If a similar mark is already in use, you can adjust your mark before submitting your application. If you choose to file your application without first performing a thorough trademark search, you may lose time and money refiling your application after a similar mark is found.

Online Trademark Searches

If you’ve been researching trademarks recently, you’ve likely seen countless advertisements for DIY legal sites that offer very inexpensive trademark searches. You may have also considered doing a simple search for your toy brand’s trademark on a search engine, such as Google. Unfortunately, these low-cost or even free options are simply not advanced enough to detect all possible matches. While these searches seem cost-effective, I don’t recommend using them.

Online searches, whether through search engines or legal sites, typically reveal only exact matches to your trademark; however, most trademark disputes don’t arise from exact matches. More often, disputes occur over matches that are not exact but are likely to be confused in the marketplace. Therefore, you should have very little confidence in the outcome of a DIY trademark search.

In addition to the online searches available to the general public, the USPTO also offers a search of the trademark database on its site. Its basic “Trademark Electronic Search System” comes with many of the same issues as any other free trademark search that you can conduct online. It will not show all potentially conflicting trademarks.

The Benefits of Working with an Experienced Trademark Attorney

While the results of a DIY trademark search may not be the most conclusive, you do have other options. The software available to trademark attorneys is much more in-depth than what is available to the general public, and a professional trademark attorney knows how to conduct a search that reveals not only exact matches, but also matches similar to your business name, logo, slogan, and even color scheme.

Once your trademark attorney has completed a trademark search, you can be confident that you have done everything possible to find potentially conflicting trademarks. If none were found, it is time to move forward and file your trademark with the USPTO. In the event that one or more similar matches have been found, your trademark attorney will work with you to determine the best course of action. Occasionally, this means you may need to go back to the drawing board and create a brand-new mark, but often, only small changes need to be made in order to avoid USPTO rejection.

After you’ve created a mark for your toy brand, you may be eager to begin the process to register with the USPTO. Work with an experienced trademark attorney to conduct a comprehensive search, and make changes to your mark as needed. This way, you can move forward to the next step of filing with the USPTO with confidence, knowing your mark is as unique as your toy brand.

This article was originally published in the June 2020 issue of the Toy Book. Click here to read the full issue!