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THE PURPOSE OF A FREE TRADEMARK SEARCH

Understanding Trademarks

In the competitive business world, establishing a unique identity for your goods and services is paramount. A trademark serves as an identifier, which can take the form of a design, symbol, word, phrase, or a combination of these elements. When registering a trademark, it is crucial to clearly define its use case and scope to prevent unauthorized use by others selling similar goods and services. Notably, the use of “TM” for goods and “SM” for services indicates a business’s intent to register a trademark. Registered trademarks are denoted by the familiar Ⓡ symbol.

The Importance of Registering Your Trademark

Registering your brand name or logo as a trademark provides vital legal protection. By doing so, you prevent other companies selling related goods from using similar brand names or logos, safeguarding your unique identity. Moreover, a registered trademark serves as a shield against fraud and counterfeiting, saving you potential losses in sales. It grants you the authority to prevent other businesses from selling related goods under trademarks similar to yours, offering peace of mind and legal options.

Why Conduct a Trademark Search?

Conducting a trademark search is a crucial step before filing a trademark application. It allows you to identify potential conflicts with existing trademarks and helps you make informed decisions about the availability of your desired trademark. By conducting a search upfront, you can avoid legal issues, expensive litigation, and the risk of rebranding in the future.

When a trademark knockout search is carried out, a pre-filing search of the USPTO trademark database (TESS) is executed and is designed to analyze identical and/or sufficiently similar marks which may trigger a Likelihood of Confusion rejection by a USPTO Trademark Examiner. This type of search considers only the form of wording in the trademark, without consideration of design and graphical details. Other services outside of this analysis can focus on searching and analyzing design elements for possible similarities.

When a knockout search is carried out, an experienced and knowledgeable trademark attorney can anticipate certain obstacles during the trademark application process and will be able to analyze the legal issues involved in a Likelihood of Confusion analysis. For example, perhaps the prospective trademark is similar to an existing trademark but the goods/services are sufficiently different to obviate any consumer confusion problems. Conversely, an experienced attorney will be able to spot meaningful differences in the marks themselves that distinguish one from the other so that Likelihood of Confusion can be negated. In some cases, it makes sense to proceed with the trademark application, whereas in others, a potential finding should halt the application process and compel the applicant to select a more worthy mark.

The knockout searches carried out by the firm are done with the intention of finding prior filings with similar or identical marks. An experienced attorney can further extrapolate potential ancillary issues that are not immediately obvious, such as the 2(e), “Descriptiveness” refusal. Remember, a trademark that merely describes the goods/services sold under the banner of the trademark is not eligible for trademark registration on the Principal Register. So, if a prospective trademark appears “Descriptive” but the trademark search reveals that the superficially “Descriptive” trademark has actually been approved in other trademark applications, the attorney can help guide the applicant how to best modify the mark to meet this Descriptiveness burden.

At Cohn Legal, PLLC, a knockout search is done as a complimentary service within the trademark application package.

Benefits of Conducting a Trademark Search

• Avoiding legal conflicts: Conducting a trademark search helps you avoid potential legal disputes by identifying existing trademarks that could infringe on your rights.
• Protecting your investment: By conducting a search, you can ensure that your investment in branding and marketing won’t go to waste due to conflicts with existing trademarks.
• Saving time and money: Identifying potential conflicts early on saves you from the time-consuming and costly process of rebranding or defending legal claims.
• Enhancing trademark strength: A comprehensive search allows you to refine and strengthen your trademark by avoiding similarities with existing marks.

Free Trademark Searches: Cost Effectiveness

Managing a startup requires careful consideration of the new company’s financial limitations. Conducting a free trademark search, with the goal of identifying and eliminating any obvious trademarks that simply cannot prevail, will save your startup a great deal of money and aggravation down the line. Rebranding under a new name after receiving a nasty trademark cease and desist letter from a competitor is extraordinarily stressful and can be enormously expensive. The Knock-Out search does not guarantee that your mark will be admitted (or that you won’t be sued by a litigious opponent) but it certainly increases your chances of success.

Trademark Searches Arms You With Data

The trademark application process may involve its own minefield of risks, but these risks can be preemptively reduced when a thorough trademark search is done BEFORE deciding on a name. Remember, the trademark search will not only identify obviously preclusive trademarks but will also allow an experienced trademark attorney to identify a strategy of tailoring the new, prospective name in such a way as to avoid infringing on existing names. For example, analyzing an existing trademark’s goods/services can instruct the new applicant how to draft its own description of goods/services that won’t tread on the existing mark/s. This method of more narrowly describing a company’s unique goods/services may minimize probable confusion and thus avoid a 2(d) rejection from the USPTO.

If you build your brand around a trademark that is ultimately rejected by the USPTO, product development and marketing under the old name will have to be entirely recreated. To mitigate these risks and increasing a company’s chances of branding-success, it is simply the right decision to first fully analyze the prospective trademark for potential barriers by conducting a thorough trademark search.

Discover the availability of your top trademark options before making a selection to save time and money. Applying to register an existing trademark will necessitate another search. Is it possible to conduct a free trademark search? Absolutely. However, the process requires time and learning. In this guide, we will provide a step-by-step approach to conducting a trademark search at no cost, empowering you to protect your brand without spending a dime.

TESS: Conducting a Free Trademark Search in the US

The United States Patent and Trademark Office (USPTO) has introduced the Trademark Electronic Search System (TESS), a valuable free search service available in the US. Acting as a search engine, TESS provides access to comprehensive databases maintained by the USPTO, offering information about registered trademarks as well as pending trademark applications. By learning how to navigate this system, you can avoid declined trademark registrations resulting from inadvertently selecting an existing or similar trademark for related goods and services.

It’s important to note that not all trademarks are registered through USPTO services. Consequently, when using TESS for a trademark search, these unregistered trademarks may not appear, leading to confusion regarding the inability to register a specific mark. To ensure 100% uniqueness and to pass the “likelihood of confusion” test, seeking assistance from a trademark attorney is recommended. A professional can assist in exploring common law and state registration marks that may not be included in the USPTO database.

Understanding Likelihood of Confusion

The term “likelihood of confusion” refers to a legal concept wherein a trademark is too similar to a registered mark, or when a business intends to sell goods or services under an already registered mark for related goods or services.

When filing a trademark registration form with the USPTO, an examining attorney will evaluate your case to ensure that no likelihood of confusion exists, thereby facilitating the approval of your registration. The USPTO outlines specific scenarios in which two marks are deemed confusingly similar, such as having similar auditory or visual characteristics or creating a comparable commercial impression.

The relatedness of the goods or services sold under a trademark is the most crucial factor. This means that if you sell entirely different goods or services, you may adopt an already registered mark without causing confusion.

If you are unsure about what may constitute likelihood of confusion, the USPTO lays out a few examples.

• They sound alike when you say them out loud.

 

• There is a visual similarity between them.

 

•      They create a similar commercial impression.

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Maximizing Your Trademark Search with TESS

When utilizing TESS for a free trademark search, begin by conducting a comprehensive search. This search will generate a list of identical trademarks and identify trademarks that bear similarity to yours. It is essential to expand your search beyond trademarked words, phrases, and logos. Examining the goods and services associated with each trademark is vital in determining whether a likelihood of confusion exists.

By following these strategic steps and utilizing TESS effectively, you can conduct a thorough trademark search, protecting your brand’s integrity and ensuring its uniqueness in the marketplace.

Basic Word Mark Search

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The basic word mark search is a straightforward method for exploring trademarks that contain specific words. While it serves well for researching available brand names, it has limited functionality, omitting the ability to search for design marks. However, if you suspect similarity between your trademark and a known one, you can refine your search by utilizing the owner’s name, serial number, or registration number.

To utilize the basic word mark search, follow these steps:

Step 1: Select the Appropriate Field to Search

Choose the relevant search field that aligns with your requirements:

– Combined word mark: TESS searches for English words across all marks, including translations with foreign words and characters.

– Serial or registration number: Search using either an eight-digit registration number or a seven-digit serial number.

– Owner name and address: If you have specific details about the mark’s owner or address, select this option.

– All: This option allows you to fill out all available fields.

Step 2: Enter Your Search Term

Once you’ve determined the search field, enter your desired search term in the designated “Search Term” box. Note that special characters, such as question marks, asterisks, and dollar signs, require quotation marks to be recognized properly. TESS employs these characters as truncation operators. For a more comprehensive understanding, we’ll delve deeper into this topic later.

The basic word mark search allows you to enter a relevant term to query the database for marks containing that word. For example, selecting “Owner name and address” and entering “Williams” will generate a list of marks owned by companies with “Williams” in their name or registered at an address with “Williams” in the street name. To search marks solely by name, opt for the “Combined word mark” option.

Using Truncation Operators to Refine Your Search

To mitigate the likelihood of confusion, it is crucial to identify marks that are phonetically equivalent to yours. TESS offers truncation operators to facilitate this process:

– Question mark (?): Find trademarks identical to yours except for a single letter (e.g., a “Alliance?” query can yield results like Allianced and Alliancey).

– Dollar sign ($): Discover exact matches and marks containing additional characters (e.g., a “Allia$ce” query may return Alliasce or Allia4ce).

– Curly brackets ({}): Identify marks matching your query but with a different character in place of the curly brackets. Each letter within the brackets represents a specific meaning (A for any letter, C for consonants, V for vowels, and D for digits.) For instance, “Alliance{V}” could yield results like Alliancea.

Step 3: Select Information That the Results Must Contain

When your mark consists of multiple words, you need to utilize the “Results must contain” option to ensure an accurate search. Choose from the following:

– All Search Terms (AND): Restrict search results to marks containing all words from your search term, regardless of the order.

– Any Search Terms (OR): Limit search results to marks featuring at least one word from your search term.

– The Exact Search Phrase: Narrow down results to marks that are an exact match to your search term.

Step 4: Select Which Trademark Entities You Want to Search

Consider the following options to refine your search:

– Plural and Singular: This option includes both plural and singular forms of marks in the search results. Choose “Singular” to exclude plural forms.

– Live Only: Ideal for clearance searches, this option compares your mark exclusively with live counterparts to evaluate the likelihood of confusion. Live marks encompass both registered and applied-for marks.

Step 5: Submit Your Query

After configuring your search options and entering the search term, click the “Submit Query” button to initiate the search process.

Step 6: Filter Your Results

TESS stores your searches with unique labels, such as S1, S2, S3, etc., accessible in the “View Search History” drop-down menu. You can filter results by combining multiple searches. In the “Search Term” field, input the designated labels for previous inquiries, separated by spaces (e.g., S1 S2). Additionally, select the desired “Result Must Contain” and “Field” options before clicking “Submit Query.”

This functionality proves valuable when combining results from “Combined Word Mark” and “Owner Name and Address” searches. Instead of reviewing two separate reports, you can consolidate them into a single search report, encompassing all marks containing your search term in company names, owner names, and addresses.

Step 7: Review the Results Page

The final step involves thoroughly reviewing the results page to evaluate the potential likelihood of confusion. Optimize your review process using these tips:

– Click on the “Word Mark” column in the list of records.

– Assess the marks at the top of the page for similarities in meaning, appearance, sound, and commercial impression.

– Look for foreign word translations and evaluate them using the same criteria.

– Review Goods and Services to identify any instances where the mark is used for selling goods or services similar to yours.

– Consider the live/dead trademark indicator, as registration may still be possible even if your mark resembles a dead one.

By following these steps, you can effectively navigate TESS and determine whether your mark presents any likelihood of confusion.

Word and/or Design Mark Search (Structured)