Trademark screening for founders

A trademark search result is a list of records, and most founders read it the way they read a domain check: is my exact name on the list or not. That reading misses almost everything that matters. A mark that is spelled differently but sounds the same can block you. A mark that is spelled identically but covers a different kind of product usually cannot. A mark that is on the list but marked dead is a history lesson, not a threat. Learning to read the list takes about ten minutes and saves the kind of money that ends companies.

Where the records come from

The United States Patent and Trademark Office keeps the federal register: every mark that has been applied for, registered, renewed, abandoned or cancelled, each with a serial number, an owner, a filing date, a status, a description of the goods or services, and one or more international class numbers. The USPTO's public search system (the replacement for the older TESS tool, which was retired in November 2023) is free to use. BetterNamer queries the same underlying records, searching the name and phonetic variants of it, and shows the matching marks with their status and classes on the trademark tab of each result.

Two things the federal register does not contain. It does not hold state trademark registrations, which exist in all fifty states and which a business that only operates locally sometimes files instead of a federal mark. And it does not hold common-law rights: a business that has used a name in commerce without registering it anywhere still has rights in the area where it trades, and those rights can predate and defeat a later federal registration in that area. A clean federal search is necessary. It is not sufficient, which is why the web check exists.

Reading status: live, pending, abandoned, cancelled

Every record has a status, and the status decides how much the record matters.

• Live, registered. The mark is on the register and the owner can enforce it. This is the record that blocks you.
• Pending. An application has been filed and is being examined, which takes months and can take longer than a year. A pending application for your name in your class is nearly as serious as a registration, because if it registers, its priority dates from the filing.
• Abandoned. The applicant stopped responding, withdrew, or lost at examination. The record stays searchable forever but grants nothing. It does tell you someone once wanted the name, and a search of the live web will tell you whether they are still using it without the registration.
• Cancelled. A registration that was later removed, usually because the owner failed to file the maintenance documents due between the fifth and sixth year and at each ten-year renewal, or because a challenge succeeded. Same reading as abandoned.

A name that matches only dead records is, from the federal register's point of view, clear. A name that matches one live record in your class is not.

Reading classes: the 45 buckets

Every registration covers specific goods or services, grouped into 45 international classes under the Nice Classification: classes 1 to 34 are goods, 35 to 45 are services. Class 9 is computer software and electronics. Class 25 is clothing. Class 35 is advertising and business services. Class 42 is scientific and software services, which is where most SaaS products land. Class 43 is restaurants and lodging.

Trademark rights are tied to the class and to the actual goods described, because the legal question is whether a consumer would be confused about the source of a product. The same word can be a registered mark for two unrelated businesses; Delta is an airline, a faucet maker, and a dental insurer, and all three coexist because nobody buys a faucet thinking it came from an airline.

So a class hit has to be read in two dimensions at once:

	Same or related class	Unrelated class
Same or similar name	Conflict. Stop, or talk to an attorney before going further.	Usually coexistence, unless the existing mark is famous.
Different name	No conflict.	No conflict.

"Related" is doing a lot of work in that table. Software (class 9) and software services (class 42) are routinely treated as related. Coffee (class 30) and a cafe (class 43) are related. Clothing (class 25) and retail store services for clothing (class 35) are related. When the classes are adjacent in that sense, treat the hit as if it were in your own class.

The exception in the top-right cell is fame. A mark that is famous, in the legal sense that the general consuming public recognises it (Nike, Google, Coca-Cola), is protected against dilution across every class. You cannot open a bakery called Google even though Google has no registration for bread.

Reading similarity: sound, appearance, meaning

The legal test for a conflict is likelihood of confusion, and the USPTO and the courts assess it with a set of factors laid out in a 1973 case (In re E. I. du Pont de Nemours and Company). The first factor, and the one that decides most cases, is the similarity of the marks in sound, appearance and meaning.

Sound is the one founders underestimate. Brightly and Britely are different strings and the same spoken word; an examiner will treat them as the same mark. Kwik and Quick, Lite and Light, Phish and Fish: all confusingly similar on sound. BetterNamer's search includes phonetic variants of the name for this reason, and grades each match on how close the name is (exact, similar, different) crossed with how close the class is (exact, similar, different). The conflict level it reports for a name is the worst of its matches: none, low, medium or high. High means a direct match in the same class. Medium means a similar name or a neighbouring class, which is the reading an attorney should make. Low and none mean the federal register, at least, has nothing close.

Appearance covers spelling and design; meaning covers translation and synonyms (a mark in Spanish is compared against its English meaning under the doctrine of foreign equivalents).

What a screening is, and what it is not

A screening like the one above answers: is there an obvious reason this name cannot be used. It is the right thing to run on every candidate, early, when changing the name costs nothing. It eliminates the names that were never going to work and it surfaces the ones that need a closer look.

It is not a clearance opinion. A clearance search by a trademark attorney goes further in three ways: it covers state registrations and common-law use through commercial databases, it reads the goods descriptions in detail rather than by class number, and it weighs the du Pont factors as a lawyer would weigh them before a tribunal. Attorneys also know which examiners and which registries behave how, which no database encodes. Expect a full clearance search to take a week or two and to cost several hundred to a few thousand dollars, depending on scope; that is cheap next to a rebrand.

The sequence that works: generate candidates, screen all of them, shortlist the ones that come back clean or low, and send the shortlist (not the whole list) for clearance. Register the domain after clearance, not before; a domain registered for a name you then cannot use is ten dollars and a reminder.

Filing, briefly

Once a name clears, filing a federal application is worth doing early. The application records your claim date, and a registration gives you nationwide priority, the ® symbol, and a listing in the same register the next founder will search. The USPTO's filing fee is per class, so a software company with a product (class 9) and a service (class 42) pays twice. Examination takes months; expect correspondence. This is the point at which an attorney earns their fee, because a badly drafted goods description is the most common way a good application fails.

And keep the web check running after you file. Registration protects against later registrations; it does not stop someone from starting to trade under your name next month, and the sooner you know, the cheaper it is to address.