How to Conduct a Trademark Name Search
Your trademark will only be registrable if it is unique and distinctive and not already registered by someone else for confusingly similar goods or services. So before you apply for a trademark, it’s a good idea to carry out some trademark searches.
This article lists 5 ways to conduct a trademark name search.
Your goal is to assess the risk of consumers confusing your trademark with existing trademarks, both registered and unregistered.
Essentially, you need to check that your proposed trademark is not already applied for or in use by someone else in your industry.
Similar trademarks can be registered if they are used to promote different goods or services - ie where the risk of consumer confusion is low.
For example, COFFEE TIME is registered in New Zealand for cafe and coffee bar related services in class 43.
COFFEETIME has been registered by a completely different company for computer software, design and messaging services.
Because the two companies’ goods and services can easily be distinguished from each other, they can happily “coexist” in the marketplace despite using essentially the same brand.
How to do a trademark search online
There are a number of options for carrying out trademark searches:
1. Search IPONZ
Use the online trademark search function at the Trademark Office website to search for trademarks that are the same as or similar to your proposed trademark. You should also search for quirky misspellings or phonetically similar variations that could be confusingly similar to your mark.
For example, if you were looking to trademark the words EASY RENT for car rental services, you would find there is already an existing trademark for EZI-RENT CAR HIRE which would be considered confusingly similar. Similarly, if you wanted to register the name COFFEE THYME for a café, it’s likely that the existing Coffee Time trademark registration in this class would be too close a match.
2. Search Online
You should also check for unregistered or ‘common law’ trademarks - ie marks which have not been registered but which are already in use by competitors.
Where someone has adopted a brand and used it for some time, they may build up a reputation in that brand or “unregistered” trademark rights. In certain circumstances, these rights can be relied on to prevent others from using the same or deceptively similar brands.
It’s a good idea to search the internet and country-specific business directories, like the Yellow Pages, for example, to make sure there are no confusingly similar names or trademarks already in use in your industry.
3. Study your Competitors
Carry out a competitive analysis in your market. You probably already know the various role-players in your trade sector. Study their names, logos and slogans and make sure that you differentiate your products and services from theirs.
4. Pay for a Search
To be even more thorough, you can pay a small fee for a Search and Preliminary Advice report from IPONZ. This can be particularly useful if you are unsure whether your intended trademark is too similar to an existing one.
5. Engage a Lawyer
You can appoint a lawyer to conduct a trademark availability search on your behalf. If you’re planning a big launch or re-brand, looking for a high degree of certainty or considering using your trademark in other countries, this might be a good idea.
No search will guarantee that your intended trademark is available and registrable or that liability will not result from adopting and using a given trademark in a specific country. However, a careful search will limit the risk that you choose a trademark that conflicts with an existing trademark.
