In this post we will walk you through a basic trademark search in the federal registry.
It is important to keep in mind, however, that a thorough search requires many more steps than a general search in the federal registry.
For instance, a comprehensive search will search all trademarks registered in all 50 states and will look to find if there are any unregistered marks that may have common law priority over your own in certain geographic areas.
Why should you perform a search before applying?
Investigating your trademark is a lot of work, but it is an important step in starting your business. It is an investment in the goodwill and reputation of your company. Doing the process right the first time can save you time, money, and headache.
An initial search is the first stage of the process and can help you make more informed decisions going forward when deciding things like whether this mark will work for you and whether you should hire an attorney to oversee the process.
More practically speaking, you should perform a search before applying because your application will be reviewed by one of the United States Patent and Trademark Office’s (“USPTO”) examining attorneys.
The examining attorney will search the same database available to you to determine whether there is another mark that is confusingly similar already registered. If you do not search and you apply only to have your application denied, then you have just wasted the application fee and you will have to return to the drawing board.
Step 1: Develop a Search Plan
It is important that you are thorough in your search procedure. Remember that the whole purpose of the search is to avoid consumer confusion with similar marks. While your search may not turn out with something exactly what you searched, it is important to continue searching with synonyms and other variations.
For example, let’s say you are considering registering the mark “BAW Fishing Rods.”
When you search to see if someone is already using a mark similar to yours, you should also run variants of the name that could be used in the industry.
First, it’s important to think about synonyms that could cause confusion like using “Poles” instead of “Rods.” You should also consider whether the words would sound similar to an existing mark. If a competitor already has “BAW Fishing Rods,” you can’t name my business “BAAAW Phishing Rods,” because both business would sound the same. This would cause consumer confusion, and your registration would be denied.
You also need to keep in mind what goods and services are related to your brand. For instance, let’s say you only make fishing rods under the “BAW” name, but if someone else is in business making BAW Fishing Reels, Fishing Line, Fishing Bait, etc., any of these would likely land you a denial on your application.
Because of issues like these, it’s important to develop a search plan before logging in to the TESS system. For more illustrations of what can lead to a likelihood of confusion visit here.
Tips for Conducting a Thorough Search
- Search all forms of all the distinctive elements of the mark (e.g. plurals).
- Search each distinctive element alone.
- Search acronyms AND what they stand for.
- Search all the legal word equivalents of terms.
- Search component parts of individual terms when necessary.
- Searches for marks consisting of two or more separate terms should be conducted so that the two terms would be retrieved whether they run together or are separate.
- Search all phonetic equivalents.
- Search all English equivalents.
Step 2: Run Your Search
Begin your search by visiting The Trademark Electronic Search System (“TESS”) at this link.
On this page, you will see three general search options and two additional search options. Today, we will focus on the first three because they are the most common to use.
The first option is a basic word mark search. Use this function to simply search a word or phrase. It is not capable of searching designs. The basic word mark search is very similar to a very basic search engine.
On this page you will notice that you have the option of searching singular or singular and plurals. All this means is that you can search for the words that you type into the search terms box and plural variation of these words. In most cases, it is advisable to search plurals.
Also, you will see the option to search live, dead, or both live and dead. Live means that the trademark has been registered and is still protected. Dead means that the trademark has been registered, but the owner has failed to renew his or her rights in the mark.
If you find that a mark similar to yours is dead, then you can still apply with your mark. The examining attorney will not deny your application if the mark that is similar to yours is dead. Rather, your mark will take priority over the dead mark. Nonetheless, it is still advisable to search both live and dead marks. This will put you on notice if there are potentially others out there already using your mark in other geographic areas.
Just for fun, I will type my mark BAW Fishing Rods into the search terms box. There are no matching results. But to be safe, I would not stop here. I would keep searching through all the possibilities I outlined in my search plan.
Structured search allows you to search word marks and design marks. It is more of an advanced search engine.
As you can see, it is not much different than the basic search option. The main differences is that there are now two search term boxes and there are drop down menus for fields and operators. These functions allow you to develop a more structured approach to your searching.
For instance, rather than running five or six different basic searches, you can put all the possible variations into the different boxes. For example, in the first search term box I can search BAW and its variations and in the second box I can put Rods and its variations.
Again, it is advisable to leave the plural option turned on. As for the field option, it should remain on “all” in most cases. However, if your search results are too dense, then adding a specific field filter can be extremely helpful. For more information on what each of the field filters mean, visit this page.
The only other new option on this page is the operator filter. The operator is designed for you to define the relationship of the terms that you are putting into the search term boxes. For instance, using the operator OR will bring up results have the term in box one or the terms in box two. This is often not what you are looking for when doing a word mark search. Rather consider using AND as your operator which will list results with any of the terms in search box one and search box two.
What do all the other operators do exactly? See the list below under Free Form Search.
Free Form Search
Free form search is for those who are more experienced with searching, but can save you a lot of time if you are comfortable with how it works. Given its complexity, it is beyond the scope of this article to explain in depth. However, the flexibility it offers can be preferred to the basic and structured search options.
For example, if you wanted to run a basic search in the free form search, then simply type it into the box “BAW fishing rods.” If you want to run a search similar to the structured search, then use the logical operators. To search effectively you will need to be familiar with your logical operators similar to those mentioned above.
- AND—Records retrieved will contain each of the search terms specified.
- OR—Records retrieved will contain at least one of the search terms specified.
- NOT—Records retrieved will not include the search term following the NOT. NOT may be used with SAME or WITH operators to retrieve documents that contain the first term but do not contain the second term in the same paragraph or sentence.
- XOR—For two search terms, records will include either the first term or the second term, but not both.
- SAME—The search terms occur in the same paragraph.
- WITH—The search terms occur in the same sentence.
- ADJ#—The search terms occur adjacent to each other in the order specified in the search. A numeric qualifier (1-99) can be appended to ADJ to allow additional words to be between the two search terms.
- NEAR#—The search terms occur in the same sentence within the specified number of words of each other. For example, the search DOG NEAR2 CAT will retrieve records for which the words DOG and CAT appear in the same sentence with at most one word between them in any order.
Let’s put these to use. To search my BAW fishing rods, I may try something basic in the search box—like BAW AND Fishing AND Rods. As we already know, there are no results. But what if as I was trying my many variations and then I came across a lot of results about curtain rods? How could I filter these out of my search? Simply change the logic of my search to include NOT. For example. BAW WITH Rods NOT Curtain.
Step 3: Review Your Search
Your results will vary greatly depending on the distinctiveness of your mark, your particular industry, and the thoroughness of your search commands. There are many factors that will play into how you should review your search.
If your search returns no marks that are likely to confuse consumers, then you are one step closer to applying for the federal registry, but you may want to search a little more before going further.
As we mentioned from the start, your search only revealed the information in the federal registry. There may be strikingly similar marks already registered in your state or a state you plan to do business in.
Also, someone may be using an unregistered mark and have already established common law priority to that mark in a particular geographic area. You may want to search your state’s database and even consider running a simple Google search to see if there is a business that is using your word mark.
If there were questionable results from your search, then you may want to consider speaking with a trademark attorney today. Perhaps your mark is distinctive enough to pass the USPTO’s scrutiny.
Perhaps the expert can help you change your mark enough to make it acceptable. In any event, speaking with someone more seasoned in the process can help you make the most informed business decision.
Keep in Mind
There are other options than going it alone.
As with everything, trademark searches get easier with practice. If you are finding the process too overwhelming or too time consuming, then consider hiring a trademark search company to prepare a trademark report or hire a lawyer to do the search for you. In the long run, this could save you considerable time and money.
Your application can be denied even if there is no similar mark in the federal registry.
Simply because there are no confusingly similar marks in the federal database does not mean your application will be approved. There are many other reasons that your application can be denied.
For more information regarding grounds for USPTO to deny your application, visit here.
There are resources available to improve your search technique.
There are many resources available to you. We are steadily adding more information to our Knowledge Base.
For more information about the logics of TESS searching, visit USPTO’s useful guide at TESS Help.
While the trademark application can be daunting, it can be done on your own. Whether or not you want to hire an attorney to oversee the process for you, doing an initial search of the federal registry is a good place to start so you can make an informed business decision. If you are interested in speaking with an experienced attorney, schedule a consultation today.