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Trademark searches - how you can conduct them: Featured Article
Why you need to do a trademark search
When it comes to doing a trademark search there are a few different reasons why you will need to conduct the search.
Here are the main reasons why you need to do a trademark search:
- The main purpose of the trademark search is to determine if someone has already trademarked the trademark that you are intending to use. The reason that you have to do the search to ensure that the trademark is not already registered is because the U.S. Patent and Trademark Office will not register the same trademark twice.
- Another purpose for doing a trademark search is to ensure that your trademark is not similar to another company's trademark, to help avoid trademark infringement. The reason for this is that if your trademark is similar to another companies then the U.S. Patent and Trademark Office is going to reject your application because of trademark infringement. What this means is your trademark is going to be denied because it is too close to another company's trademark and that means that consumers can confuse the trademarks.
What is a common law search?
Most of the trademarks that you will be searching for are going to be found in the federal government's record because a lot of companies actually register their trademarks because that option provides you with more protection. But since you don't have to legally register your trademark to use it you can still own a trademark because of common law trademarks. So in order to do a detailed search not only are you going to need to conduct a federal trademark search, but you are also going to need to conduct a common law search.
A common law search for trademarks involves searching beyond government records. Common law searches can entail checking phone directories, yellow pages, industrial directories, state trademark registers, the internet, and many other places. The reason that you are searching through all of these places is because you are trying to determine if a certain mark is being used by others when they have not filed for federal trademark registration.
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What happens if there are conflicting marks?
If your application is denied because you and somebody else have conflicting marks, you can appeal that decision. But the thing is even if you do a federal search and a other searches you can still miss a certain mark being used. So you want to make sure that you check every database that you can to help find that mark. If you do wind up with a conflicting mark you can check the current status of your conflicting application or registration with the Trademark Applications and Registrations Retrieval, or TARR, system.
Helpful Resources: 1. Trademarks - where to start This website gives you information about frequently asked questions to trademarks and includes instruction on how you can do a trademark search. 2. Trademark Search - How Do I Do A Trademark Search? 3. Understanding Trademarks 5. Design Search Code Manual 6. Trademark Official Gazette 8. Brown and Michaels - Trademark Search Tips 9. How Do I Conduct a Broad Worldwide Trademark Search? 10. Do Free Trademark Search to Avoid Problems with Your Application |
Here are different ways that you can conduct a federal trademark search.
Option one:
By visiting the U.S. Patent and Trademark Office's website,you can conduct a trademark search for free. Once you get to the website you are going to want to find the Trademark Electronic Search System, which is also known as TESS. In order to find TESS you are going to want to look for "Search Trademarks" so you can begin an actual search. When searching this database online you can search through both registered trademarks and pending trademark applications.
Option two:
If your trademark is going to include a design element then you are going to need to do a trademark search by using a design code, rather than just a regular trademark search. But in order to do a design code search you are going to need to obtain the proper design code or codes to do the search. In order to find the design code or codes that you need you are going to want to consult the Design Search Code Manual .
Option three:
If you prefer to search for trademarks the best way you can do this is at any Patent and Trademark Depository Library, or PTDL. Their search facilities are available for the general public to use and the best part is you can find one of these libraries in all fifty states; some states even have more than one library. To find the library that is closest to you simply visit this website and find your state.
Can the Trademark Office Conduct a Trademark Search for the Applicant?
The answer to this question unfortunately is no. The only time that the Patent and Trademark Office will do a trademark search is once the application is filed. And the only reason that they even do a search is because it is an official part of the examination process. What they do a search for is to determine whether the trademark applied for can be registered. Basically they are looking at the other various registered trademarks to ensure that your trademark is not going to infringe upon somebody else's trademark.
Recommended way to conduct a trademark search
Luckily the U.S. Patent and Trademark Office has a few steps that you should follow if you are going to be conducting a trademark search. They suggest that you follow these steps in order so that you can be sure that you are covering all of your bases when it comes to conducting trademark search. Not to mention the fact that you will be doing a very comprehensive search so you should be able to determine in the end whether or not you can use your intended trademark. This is helpful because it lowers your chances of getting your application denied, which is good because the registration fees are not refunded, even if your application is denied. But you need to keep in mind that these steps only cover what you should be doing for a federal trademark search, it does not cover the steps you should take for a common law search.
Here are the steps you should follow:
Step one:
Trademark Acceptable Identification of Goods and Services Manual. This item is available in paper, DVD-ROM or on the USPTO Website. This is an alphabetical listing of acceptable terms for the identification of goods and services. What you are going to want to do is locate the terms that describe your goods or services and then note the international class number that is listed next to each term. You are also going to want to identify any terms for goods and/or services that are used, advertised or sold with your product. Then check for deleted terms that might be related to your goods or services.
Step two:
International Schedule of Classes, which is available in paper, on DVD-ROM or on the Web. You are going to want to scan the schedule for additional classes that are related to your product or service. The schedule is actually located on the back cover of the "Basic Facts About Trademarks" booklet.
Step three:
Trademark Manual of Examining Procedure (TMEP), which is available in paper, DVD-ROM or on the USPTO Website. You are going to want to review Chapter 1400 for the appropriate class scope notes in order to confirm the terms and classes that you have chosen.
Step four:
Design Code Manual, which is available in paper or on the USPTO Website. This is where you are going to need to go to search for your trademark if it is going to incorporate a design or logo. This is used to search for trademarks that might be confusingly similar. You are going to want to use the index in the back of the "Design Code Manual" to locate the right six digit code for each design element that is in your trademark. You are also going to want to make sure that you carefully review the guidelines for each category so that you get the design codes right.
Step five:
Trademarks Registered and Pending DVD-ROMs or the Trademark Electronic Search System (TESS), which is available on DVD-ROM or on the USPTO Website. You are going to want to conduct the search by combining your word mark or logo with the terms, classes and design codes that you identified in steps one through four. A good thing to keep in mind is to also search for alternate spellings, phonetic and foreign language equivalents, synonyms and homonyms.
Step six:
TARR Trademark Status Database, which is available on the USPTO Website only. This is going to be your final step in searching for federal trademarks. But you are going to want to check the Trademark Applications and Registrations Retrieval, or TARR, system for the current status of the marks that you found in step five. The records in the Web trademark databases are linked directly to their TARR equivalents and the TARR database is updated daily at 5 a.m. The reason that you want to check this database is because it contains important trademark application and registration information that you cannot find on CD-ROM, the Web or in the "Official Gazette", which is issued by the USPTO.
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