In my work as an IP attorney, the trademark searching and selection is an important step in the process of registering a trademark. It involves searching existing trademarks and identifying those that are similar or identical to the proposed trademark in order to determine the availability of the proposed trademark. Want to meet all legal requirements for a trademark? Find out why you need to do trademark searching and selecting in this quick guide.
Table of content
The first step in the registration process is trademark search and selection. This involves searching for existing trademarks to identify those that are similar to or identical to the proposed trademark to determine if it is available. Here are some key steps in the trademark searching and selection process:
- Conduct a preliminary search: This is a preliminary search of existing trademarks to identify any similar or identical trademarks that may be in use. This search can be done online using various trademark search databases.
- Conduct a comprehensive search: A more comprehensive search should be conducted after the preliminary search. This search will include a broader range of trademarks, such as pending and registered trademarks, common law trademarks, and trademarks that are similar to the proposed trademark.
- Evaluate the search results: Once the search is complete, the results should be evaluated to determine the availability of the proposed trademark. This includes identifying any similar or identical trademarks that may create a likelihood of confusion with the proposed trademark.
- Select the best trademark: After evaluating the search results, the best trademark should be selected. This should be a trademark that is available for use, that is distinctive, and that is not likely to create confusion with existing trademarks.
- File the trademark application: Once the trademark is selected, the trademark application should be filed with the appropriate trademark office.
It’s important to note that trademark searching and selection is a complex process and it is advisable to work with a trademark attorney or agent who has experience in trademark searching and selection. They can help to ensure that the trademark is available for use and that it meets all the requirements for registration.
Why do I need to search for a trademark?
A thorough search of your mark is essential before you apply. This will help identify potential problems like confusion with another registered mark or marks in a pending request.
In addition, it could help you avoid paying the extra expense of applying to register a mark for which another party may have stronger rights.
A search may also reveal whether your mark or a portion of it appears in generic words or descriptive wording in other registrations. If so, this could make it difficult or weak to protect.
Where can I find the answer?
The USPTO offers an online search tool, TESS (Trademark Electronic Search System), free and available 24-7 at TESS search trademarks. The USPTO won’t search your mark before you apply.
However, as part of the examination of your request, the USPTO searches the mark and gives the results. The USPTO may refuse to register your trademark if it discovers a registered mark that is confusingly similar or an earlier-filed, pending mark for related goods/services.
You can also search TESS databases at a Patent and Trademark Resource Center. TESS searches only allow you to explore the USPTO’s federal trademark application and registration database.
This excludes marks from other parties with trademark rights but not federal registration. These rights, also known as “common-law” rights, are solely based on the mark’s use in commerce within a given geographic area. Common law rights can be stronger than those based on registrations if the common usage is more recent than it supports.
You should search the Internet for similar marks and articles related to your products and services to determine if special common law rights exist. It is also good to search the state trademark databases and business name databases. It is essential to hire a trademark attorney for assistance with your search.
Do I need a lawyer to represent me?
Filing a trademark request at the USPTO can start a complicated legal proceeding. You will have to adhere to all trademark rules and statute requirements. Most applicants hire an attorney with expertise in trademark matters to represent them and give advice.
Even if you don’t hire an attorney, a USPTO trademark attorney can help you with the process. However, you cannot get legal advice from them. After you hire an attorney, USPTO will only communicate about your application with your attorney.
trademark attorneys can help you in the following areas:
Helping you to police and enforce any trademark registrations that may arise from your application. An attorney is not mandatory, but it could save you money and prevent you from costly legal problems in the future.
A comprehensive search of federal, state, and common law trademarks can be done before you file your trademark application. Extensive investigations are crucial because other trademark owners may claim more substantial rights in trademarks similar to yours, even if they are not federally registered.
Unregistered trademarks won’t be included in the USPTO Trademark Electronic Search System Database (TESS). However, they may still prevent you from using your mark, even if the USPTO registers it. A trademark lawyer can also help you navigate the process of applying for trademark protection.
This includes accurately classifying and identifying your goods and services and responding to any refusals to registration that an examining attorney might issue.
In addition, a private attorney can help clarify the scope of your trademark rights and provide advice on the best ways to police and enforce these rights. You are responsible for enforcing trademark rights, not the USPTO.
How do I find a registered trademark attorney?
To locate an attorney, contact us on our website https://www.patentpc.com/ and you can be assured of quality trademark services.
What to consider when selecting a mark for federal registration?
After determining what type of protection you need, specifically, trademark protection, the first step in the application process is selecting a mark. Because not all marks can be registered with the USPTO, this must be done carefully.
Some marks are not legally protected. Those marks may not be able to serve as the basis of a legal claim from the owner stopping others from using similar marks on related goods or services.
New Businesses and individuals new to trademarks and the application/registration process mostly choose a difficult or impossible mark to register or protect for various reasons. Consider
(1) Whether or not the mark you wish to register can be done and
(2) The difficulty of protecting your mark is based on the mark’s strength.
This is because the USPTO registers mark only; therefore, you are responsible for enforcement as the mark owner.
These are some considerations when selecting a mark. Although the USPTO can give you general guidance, it cannot tell you whether your particular mark can be registered before filing your application.
Probability of Confusion with Other Marks
The USPTO checks each application for compliance with federal rules and laws. The USPTO will often refuse registration if there is a “likelihood of confusion” between the applicants’ trademark and a mark already registered before or in a pending prior-filed application. The
USPTO considers there is a likelihood that confusion exists when the marks are identical. This is because the parties’ goods and services are so closely related that consumers will mistakenly believe they came from the same source.
If a court holds that the mark in question is famous, similar marks or related products/services are not enough to support a finding that there is a likelihood of confusion. This means that two identical marks can coexist if they are not related.
Every application is considered individually, and there is no one-size-fits-all test to determine whether there is confusion. Before you submit your non-refundable request, make sure to check whether the proposed mark could confuse you with another trademark. This determination is only possible after thorough trademark research.
Similarity between Marks
The marks must first be compared to see if they are similar or different. Not all marks have to be identical to detect confusion. If marks sound the same when spoken, have the same meaning, appear visually similar, create the same commercial impression on the consuming public, or are identical in appearance, they may be confused.
Based on the similarity of the goods or services, similarity in appearance, sound, or meaning could be enough to support a finding that there is likely to be confusion.
Relationship of Goods &/or Services
Even if two marks are confusingly similar, confusion will only exist if the goods/or services that are connected with them are related. It is determined whether the goods or services are related by comparing the commercial relationship between them and the ones identified in the registration.
You don’t have to compare the goods or services to find similarities. It is enough that they are connected so that consumers can assume (mistakenly) that they came from one source.
The question isn’t whether the actual goods/services are likely to be misunderstood, but if there is a possibility of confusion about the source.
Goods and Services
Each application is determined by its facts. There is no mechanical test that can determine if there is confusion. Before you submit your non-refundable request, make sure to check whether the proposed mark could confuse with another trademark.
This determination is only possible after thorough trademark research discussed below.
Strong v. Weak Marks
A mark should not be confused or misinterpreted with any other existing marks. Additionally, it is best to choose a strong mark in legal and trademark terms. This will enable you to block third-party use. These marks are “strong” because they are easier to protect.
On the other side, if a trademark is “weak,” others will use it to describe goods and services. Therefore, it can be difficult and expensive for police to protect and enforce. It would help if you avoided weak marks. They don’t have the same legal protections as a more substantial, distinctive mark.
The four most common categories for marks are fanciful and arbitrary, suggestive, descriptive, and generic. It will impact the registration of your mark and your ability to enforce rights.
Because they are unique, fanciful or arbitrary marks are the strongest marks. Fanciful words are words invented without a dictionary or any other known meaning. Arbitrary marks refer to words with a defined meaning and no dictionary.
Association/relationship with the goods protected. Fanciful and arbitrary marks are possible to register and are more likely to get registered than descriptive marks.
Because these marks are unique and creative, it is less likely others will be using them. Examples of fanciful or arbitrary marks: BELMICO to provide “insurance services” and BANANA for “tires.”
Suggestive markings suggest but don’t describe qualities or connections with the goods or services. Suggestive marks can be registrable and are often considered “strong” marks. If you don’t want to choose a fanciful or arbitrary mark, suggestive marks are your best choice.
Examples of suggestive marks: GLANCE-A-DAY for “calendars” and QUICK N’ NEAT for “pie crust.”
Descriptive Marks are words or images (e.g., depiction of a TV to “television repairs services”) that describe goods and services. They are typically considered “weaker” and thus more difficult to protect than arbitrary and fanciful marks.
If a USPTO finds that a trademark is “merely descriptive,” it cannot be registered or protected on Principal Register unless it acquires distinctiveness, which is generally achieved by extensive commerce use over five years or more. Until they are distinctive, descriptive marks will be considered “weak.”
Marketing professionals often suggest that applicants use descriptive marks to describe their goods and service. They believe this reduces the need for costly consumer education and advertising, as consumers can identify the product or the service from the mark.
While this may seem logical marketing advice, it often results in marks that cannot easily be protected. The descriptive mark may not be registered or protected against subsequent users of identical or similar marks.
Therefore, adopting a descriptive symbol could cost more long-term. It may either be because of higher legal fees to choose a new trademark or because it may prove costly to police and enforce the mark.
Examples of descriptive marks:
WORLD’S BEST BAGELS for “bagels.”
Generic terms are the weakest form of “marks” and cannot be considered “marks” legally. They are therefore not enforceable or registrable against third parties.
They are not protected as generic terms are the everyday, common name for goods, and anyone can use them to refer to their products and services. If you choose to adopt a generic term, it is not protected.
If you use the term to identify goods or services, others will identify potential competitors. A strong, fanciful trademark can also become generic if used in a non-trademark manner.
The original owner of a trademark could lose its rights to the mark if it is not correctly policing its use over time.
They are applied for generic trademarks when filed because they refer to the product or good offered by the service.
BICYCLE is for “retail bikes stores” or “bicycles.” MILK is for “a dairy-based beverage.”
Trademarks that became generic after long-term, widespread, non-trademarked use:
ESCALATOR: “moving staircases,” ASPIRIN: “pain relief medication.”
Additional Reasons for the USPTO to Refuse Registration
The USPTO can also refuse the registration of a mark proposed for many reasons. This includes a surname, geographic description of the origin of the goods/services; disparaging and offensive; a foreign word that translates into a descriptive term or generic term; an individual’s name or likeness; the title or a single movie or book; and any solely ornamental matter.
Although some of these refusals can be a bar to registration, other circumstances may allow for evidence.
Other Factors when selecting a mark
Other essential factors to consider when choosing your mark include whether the public can remember, pronounce, or spell it. In addition, if you intend to sell your goods or services abroad under the same U.S. Mark, it is essential to consider whether the mark could have a different meaning when translated into another language.
Does federal registration of my trademark need to be done?
No. No. Parties are not required in the United States to register their marks to secure protectable rights. However, without registering a trademark, you can create “common-law” rights to a mark based on its use in commerce.
Therefore, federal trademark registration on a Principal Register has many significant advantages over common-law rights.
- You are legally presumed to own the mark, and you have the exclusive right to use the name nationwide for the goods/services listed in the registration. State registration does not provide rights beyond the borders of one state. Common law rights apply only to the particular area where the marks are used.
- Notify the public about your claim to be the owner of the mark.
- Listing in the USPTO’s online databases
- It is possible to register the U.S. Registration with the U.S. Customs and Border Protection Service to prevent importation from infringing foreign products; the federal registration symbol is allowed to be used.
- You can bring an action in federal court regarding the mark.
- You can use U.S. Registration as a basis for registration in foreign countries.
When Should I use the trademark symbols: TM, SM, and (r)?
When you use your mark, it’s best to include a designation. If you are registered, please use the information regarding the exact usage of the”(r)“symbol as to place, e.g., whether it’s used in a Subscript or mark.
Suppose the trademark has not been registered yet. In that case, you can use TM or SM to indicate that this mark has been adopted as a service or trademark, regardless of whether you have filed a USPTO registration application.
Only use the registration symbol in conjunction with the mark on the goods or services listed in federal trademark registration.
However, no specific requirements superscript manner. Notice: “(r)” is used by several foreign governments to indicate the country where a mark has been registered. This country. Use of the symbol by the holder of an alien registration may be proper.