A trademark is a type of intellectual property that consists of a recognizable insignia, word, phrase, symbol, design or a combination of these. Before you proceed with registering your trademark to establish ownership over your brand, name, or logo, performing a trademark search is critical. Conducting a trademark search is of paramount importance as it helps to prevent potential trademark conflicts.
If you perform a quick search on the United States Patent and Trademark Office’s database, and you do not encounter any possible conflicts and prior art, it does not imply that the path for trademark registration is clear. A quick register search may not be able to capture any elements of similarity, or likelihood of confusion between your mark, and those in the existing databases. To fully capture the required information and variables that may create issues in successfully registering your trademark, you need to perform a comprehensive trademark search. It helps the trademark applicants to pursue the registration of new trademarks that are free from potential conflicts.
A comprehensive trademark search cost provides better results than quick searches, but it helps in cutting down costs and time involved in costly legal actions that may arise later as a consequence of ineffective searches in the preliminary stages. A comprehensive trademark search highlights any evidence of prior art in your mark by surveying chosen geographic jurisdictions and Nice Classes. It helps the owner to evaluate the likelihood of the proposed mark to obtain a registration. A comprehensive trademark search must cover Federal and State trademarks, WIPO marks, business names, and more.
Here are a few important things you should know before conducting a comprehensive trademark search.
While conducting a comprehensive trademark search, you must cover similar and deceptively similar trademarks registered or applied with the US trademark registry. You should cover international trademark databases, and your search strategy must include all published, registered, expired, and abandoned trademarks in the US trademark databases, along with the recently published Trademark journals.
Search Strategies for A Comprehensive Trademark Search
- Search based on Word Variations: a given registered mark may not be the same as the mark you intend to use, but it may resemble it to create confusion and can pose infringement risks at later stages. To conduct an exhaustive search, you need to use different combinations of word strings based on phonetics and spelling. To employ variations of a word, you can use prefix and suffix variants, corrupted orthography, phonetic similarities, and irregular plural. You can also construct search strings using abbreviations, punctuations, and unconventional spellings. To conduct design searches in major search databases, you can either use “design phrases” or “design codes” for Design Marks.
- Search based on Competing Goods & Services: Your mark may overlap with that of your competitor operating in the niche industry. You can research the competing products and services in your industry before searching.
- Search based on Existing Common law Marks: You need to conduct a thorough common law search that constitutes a search of various proprietary business databases, state registrations, and domain name registrations. The search must contain a general name search, social media search, search for unregistered websites on-website providers, different brand names, and company databases.
Preliminary Steps to Conduct a Comprehensive Trademark Search
You need to clearly describe your product or service to eliminate any likelihood of confusion. Identify specific terms for your product/service that you can associate with your mark. To identify the usability of the term, you can look into the listing of the Acceptable Identification of Goods and Services Manual. You can enter these terms into the search bar to get the desired results. In this manual, you can get the listing for the International Class for the item. While it is not important, an idea about the international class will make your search strategy more thorough. Identify the related goods or services, and their classes before you develop a basic search strategy. You can implement the above strategy options to make your search process more elaborate. Once you fulfill these steps you can move ahead with the actual search operation.
Conduct The Actual Search
To initiate the actual search process, you need to visit the USPTO website homepage and select the Trademark option. From the drop-down listing, click on “Searching Trademarks”. You need to select the TESS (Trademark Electronic Search System) option from the new page. Select “Word and/or Design Mark Search (Free Form)”. Based on your search strategy, and the search strings relevant to your mark, you need to enter the term in the “Search Term” box, and click “Submit Query”. Ensure that you’re covering all the bases, and explain the field of search. Once you start obtaining relevant results, narrow the search to reduce distractions, and review the records you find.
These are some important factors that must govern your comprehensive trademark search strategy. It will help you to obtain a clear path for registering your trademark and avoid possible future litigations associated with infringement risks.