When registering a new trademark, the most important first step is creating a thorough trademark search report. Doing so can save you time and money in the long run and keep your trademark registration process running smoothly.
It is important to keep in mind that a thorough search requires more steps than a simple search in the federal registry. For instance, a comprehensive search will go through the trademarks registered in all 50 states and look for any unregistered marks that may have common law priority over your own in certain geographic areas.
Below we list the three steps you should follow when making a thorough trademark search report. However, keep in mind that this process is no substitute for a full search done by an experienced trademark attorney.
Step 1: Develop a Search Plan
It is important that you are incredibly thorough in your search procedure. Remember, the whole purpose of the search is to avoid consumer confusion with similar marks. Trademark searches are difficult to do correctly because you are trying to prove negation. In essence, you want to make sure there aren’t any trademarks that infringe on your idea. This can be hard to do in practice.
The primary goal of your plan should be finding other trademarks that have a “likelihood of confusion” when compared to your trademark. For instance, a trademark such as “Great Fishing Rods” would cause a trademark application for “Good Fishing Rods” to fail. This is because the similar names cause a likelihood of confusion for customers.
Because of issues like these, it’s important to develop a search plan before actually beginning your search.
Tips for Conducting a Thorough Search
In general, you should search for all of the following:
- All forms of the distinctive elements of the mark (e.g. plurals).
- Each distinctive element alone.
- Acronyms AND what they stand for.
- All the legal word equivalents of terms.
- Component parts of individual terms when necessary.
- Phonetic equivalents (e.g. “Fishing” and “Phishing”).
- All English equivalents (e.g. “color” and “colour”).
Step 2: Run Your Search
Begin your search by visiting The Trademark Electronic Search System (“TESS”).
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 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.
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.
Structured search allows you to search word marks and design marks. It is a more advanced type of search engine. The biggest advantage of the structured search is running multiple search terms at once.
For instance, rather than running five or six different basic searches, you can put all the possible variations into the different boxes.
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.
Free Form Search
Free form search is for more experienced searchers, 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 makes it a better option overall than the basic and structured searches.
To search effectively in free form search, you will need to be familiar with logical operators. Some common ones include:
- 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.
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. However, you may still 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. Remember that just by using a certain mark a company can gain trademark priority over it. For this reason, you’ll also want to try other databases such as Google or your state’s database.
Frequently, even after you conduct your own trademark search using TESS it’s typical to use a premium tool, or order a comprehensive search report from a third-party vendor.
While the trademark application can be daunting, doing a trademark search on your own isn’t particularly hard. Whether or not you decide 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.
However, an experienced attorney usually has more experience in the field, and can give you better results than a simple TESS search can provide.