What is a Trademark?
A trade mark is any unique expression that a business can use to distinguish their business’ goods or services from those of other traders. The term ‘Trademark’ is a broad term that encompasses word, slogan, photograph, logo, graphic, color combination, sound or even smell. Once assigned, the concerned party can enjoy the exclusive right to use that trademark for an unlimited period (provided the trademark is renewed every 10 years or as per the statutory rules of the respective trademark office).
Apart from the exclusive rights to their use under the categories they are registered in, it also deters piracy and prevents similar names from being registered by other parties. While in registration process the business is authorized to use ™ symbol and once it is registered they can use ® symbol with the respective mark.
What is Trademark Search?
Before you invest your hard earned money and resources in registering a mark it is prudent to assess earlier, whether the intended mark is likely to be granted. The likelihood of a mark being granted depends on many factors, like, if the mark has already been used, if granted, whether it is active or not, whether the granted mark belongs to the same category or class in which you are intending a trademark, whether the intended mark can dilute some already existing mark etc.
Whatever your goal may be, a thorough, comprehensive and detail trademark search is critical to answer any of the aforementioned questions. So a trademark search can be defined as a review of various information, including trademark databases, and occasionally commercial and marketplace resources, typically designed to determine whether a particular trademark is available for (a) use without risk of infringement of the rights of a prior user or registrant, and (b) registration, referring to the criteria for registrable trademarks under local laws.
Why should we do Trademark Search?
There are many purposes an efficient, complete and comprehensive trademark search can accomplish. Some of the important purposes that it can serve are:
Determining Distinctiveness of a Mark:
For a mark to be granted as trademark, it is important for the mark to be distinct, unique and different from existing marks. In other words we can say that ‘trademark distinctiveness’ is one of the most important criteria to be met before a trademark is granted and approved by the respective patent office.
Determining Registrability of a Trademark: Before you move ahead with a trademark or tradename, it’s important to determine its For Corporate Name Clearance: A full, complete and comprehensive trademark search can also assist in obtaining Corporate Name Clearance. According to statutory rules, only one corporation can be incorporated or qualified with a given name. Thus, it is important for corporates to establish right at the beginning that the name is not registered. It is prudent, therefore, to make sure that the desired corporate name is available before attempting to incorporate it.
Ensuring Availability of a Domain Name:
When a company is intending to take their business online, securing a unique domain name right at the beginning is essential. A comprehensive trademark search also enables companies determine if the domain name they are willing to undertake is valid and unused.
Getting prepared for trademark infringement disputes:
In case you are litigating with a trademark infringement suit, it is important to determine the worthiness and scope of the trademark suit. And the same can be achieved with a proper, comprehensive and detailed trademark search.
Understanding Common Law and Scope of a trademark: In countries like the United States, a trademark is granted on first-to-use basis wherein a trademark is deemed valid even if it’s not registered federally. Here comes the importance of “Common Law”. Though, the scope of common law is limited to the respective geography where it’s used, still, a business needs to search it thoroughly while determining the uniqueness and registrability of a mark.
Some important resources those we can use while doing common law searches are:
- Industrial directories
- Yellow Pages
- Phone directories
- State trademark registers
- News Papers
Benefits of doing a comprehensive and full trademark search:
- It eradicates likelihood of confusion
- Helps us in avoiding trademark infringement suit
- Helps in Avoiding brand devaluation
What is Phonetics and how is it important in a trademark search?
Phonetic equivalents are words that sound-alike creating the possibility of confusion between the two words (for example ‘CAT’ and ‘KAT’). Phonetic equivalents are important because they indicate how an existing mark may be perceived by a consumer as, too similar to your proposed mark. If phonetically equivalent marks exist in the same industry there is a strong possibility of consumer confusion and the proposed mark may be rejected.
How to Perform a Trademark Search
Doing trademark search in ‘TESS’ Database
Trademark Electronic Search System search or “TESS” search allows searcher to search the USPTO’s vast record of registered trademarks in order to find those marks that may be similar to your mark. To conduct this trademark search head on to the USPTO’s website and enter your search query.
Step 1: Log on to Trademark Electronic Search System Database
Step 2: Use the options that suits you the best. Typically, we use “Word and/or Design Mark Search (Structured)” option to do our trademark search.
Step 3: Put the keyword you want to search on the ‘search Term’ field
Step 4: Refine your search as per the goal with various fields and operators
Various fields that we can use in TESS database are:
- Abandonment Date
- Assignment Recorded
- Attorney of Record
- Basic Index
- Coordinated Class
- Cancellation Date
- Change in Registration
- Current Basis
- Decimal Mark
- Description of Mark
- Design Code
- Design Description
- Disclaimer Statement
- Distinctiveness Limitation Statement
- Filing Date
- Full Mark
- Goods and Services
- International Class
Description of some of the important classes:
Coordinated Class [CC] Field: The Coordinated Class Field is used by trademark search professionals to retrieve marks from International Classes related to a specific International Class. The Coordinated Class Table was designed to automatically include related International Classes in the search results when the primary International Class is searched.
International Class [IC] Field: This field is used by trademark search service providers to identify the class assigned to a mark under the International Classification of Goods and Services (Nice Agreement) based upon the goods or services on which the mark is used.
Filing Date [FD] Field: The Filing Date field in the TESS database is used to retrieve date when a complete application was received by the USPTO in the format YYYYMMDD. The $ (unlimited) and ? (single character) truncation can also be used suit your search as per the need.
Goods and Services [GS] Field: This is one of the most important fields used by trademark search professionals to identify the nature of the goods and/or services as set forth in the application or registration. For more details about this field searcher can see Acceptable Identification of Goods and Services Manual.
Registration Date [RD] Field: This field contains the date on which a mark was registered by the USPTO. This field applies only to registered marks; pending marks will have a registration date of 0. Dates are stored in the format YYYYMMDD. The $ (unlimited) and ? (single character) truncation operators can be used in date searches.
Serial Number [SN] Field: This field contains the unique identification number assigned by the USPTO to trademark applications that have received a filing date. Search for a specific record by entering its full 8-digit serial number.
Owner Name [ON] Field: This field contains the name of the individual or organization having controlling interest in the use of the mark.
Registration Number [RN] Field: This field contains the unique number assigned to applications that have received approval for registration. To search this field, use the seven-digit registration number (with leading zeros if not seven digits).
Operators that we can use while doing trademark search are:
To sum everything up, we can say that doing trademark search is something that requires deep understanding of trademark search databases and trademark regulatory framework of the respective jurisdiction.