April 1, 2016

Basic Trademark Search

A basic trademark search is a critical step in securing a name for your business venture or soon-to-be-released product. Unlike patents, which are granted on first-to-file basis, trademarks are assigned on first-to-use basis and thus you run the risk of infringing other trademarks, even if, it is not registered federally. All we can say, that Without the benefit of basic trademark searching, you run the risk of infringing on someone else’s rights which in turn could force you to stop using a name for which you have spent your precious time and resources.

To address this issue, ‘TMReady (Formerly The Trademark Search Company)‘  came-up with basic trademark search service that can help businesses eliminate this risk right at the beginning of the business cycle. The basic trademark search provided by ‘TMReady (Formerly The Trademark Search Company)’ helps clients find near/similar marks that can improve the probability of granting approval to their trademark.

The basic trademark search package includes trademark searching coverage of US Federal and Madrid with add-ons such as US States search, US common law search, Canada and Mexico trademark search.

For common law, we cover SEC filings, business names and records, national yellow pages, top newspapers, financial Sources (like Hoovers, Dow Jones, Standard & Poor), industry news, and top Internet search engine results.

What are the purposes of doing a basic trademark search?

Ascertaining availability of a name: Ascertaining availability is one of the most important aspects of doing trademark search, wherein we assess if the intended mark is likely to cause confusion with a mark in which another party has already established rights. In case the confusion is likely, the mark may infringe upon some third party rights and thus, should be reconsidered. Even if, the intended mark is not infringing someone else mark entirely, but is diluting an existing mark, nevertheless, businesses need to reconsider their intended mark.

Ascertaining availability of a trademark is a broad term wherein two important aspects are also looked upon which are: a) ascertaining distinctiveness of a name and b) ascertaining registrability of a name. While assessing distinctiveness we establish if the proposed mark is in fact descriptive or generic. Generally, terms that are very generic are not registrable like name of a country, name of a city, name of some public figure etc.

While assessing registrability, we do trademark search that can determine whether a particular mark is registrable or not. Even though a mark is registered it doesn’t mean that someone can’t register it because the mark might have been abandoned by the registrant or the scope of the right may be extended up to the specific geography (common law).

Corporate name clearance: Registering a corporate name in the United States generally requires two types of clearance: (1) the trademark-type availability search, described above; and (2) clearance with the Secretary of State, corporation bureau, or similar agency in the state in which the corporation is to be incorporated and in each state in which the corporation will qualify to do business. With basic trademark search services we can also ascertain how likely is it to get corporate name clearance of a mark.

Domain name availability: Determining the availability of a domain name is another factor that we look into while doing trademark search. This is crucial when we intend to have an internet address of our business.

Infringement Disputes: No matter, whether, someone else has infringed upon your intellectual properties or you have infringed upon somebody else’ IP rights, it has to be substantiated. Irrespective of the situations we need to assess whether IPs are infringed in the first place and if it is worthwhile to send cease-and-desist letter. A basic trademark search satisfies all these concerns and helps us take an informed decision.

Financings, Mergers, and Acquisitions: Intellectual properties like trademarks can be used as collateral in a financing. However, before you enter into any such engagement it’s important to determine the validity of either party, the present economic value of the trademark or whether the investment will be worth considering. We can assess all such things with trademark search.

Policing Infringement:  

You never know who is infringing or diluting your trademarks and thus, it’s important to keep a vigilant eye on each of the activity that is going on in the trademark arena. Trademark infringement watch or trademark watch is one of those activities that can help us assess this and can be accomplished with basic trademark search.

How will we formulate the search query for basic trademark search?

There are many ways to formulate a search query and it depends mainly on the kind of search and the domain to which the mark belongs to, still, there are some common criteria on the basis of which we can formulate our search strings or search query.

Variations in Prefixes and Suffixes: While constructing a search query it is important to consider plurals, possessives, and derivatives. If we don’t cover these terms we may run the risk of incomplete search which in turn can ruin our business objectives. For example, if you are intending to do a trademark search for the term “NATION” then it’s important to look for plurals like ‘NATIONS,’ possessive words like ‘NATIONAL’ and derivatives such as ‘INTERNATIONAL’. Similarly, various suffix and prefix can be used to capture data that are not possible otherwise.

Considering Irregular plural constructs:

There are some databases that offer searcher retrieve all marks that contain words in singular or plural form. However, this is valid for conventional plurals that are made up of  ‘s’ at the end of the word. To retrieve non-conventional plurals we need to create our search strings accordingly. For example, a search term ‘baby’ may not retrieve terms containing ‘babies’ and same is the case with ‘FOOT’ and ‘WOMAN’.

Corrupted Spellings:

There are many occasions when businesses use corrupt English words to trademark their products or brands. While crafting search queries for trademarks we need to address those issues as well. For example if we are intending to search the term ‘QUICK’ we also need to look at terms like ‘QUIK,’ ‘KWIK’ ‘QUIX’ and ‘KWIX’.

Punctuation: While creating search strings it’s also important to consider punctuations that businesses might have used. For example, in many cases, ABC may become A.B.C or A B C

Synonyms: Synonym is another important consideration that should be looked at while creating search strings for a trademark search. In this, we consider whether the intended mark can have some synonyms that businesses could have used. For example, a search of a proposed mark containing the word SEA could include alternate search term as ‘OCEAN’.

Limiting search results

When you are overwhelmed with data it’s important to direct the database to search only for those data that are relevant and updated. This is also known as ‘narrowing data’ where-in we restrict our search with certain parameters. Below are some of the ways through which we can put restriction on our search result.

  • Limit to active (pending or registered) records, or include both inactive (abandoned, cancelled, or expired) and active records
  • Limit by identification of goods/services
  • Limit by class of goods/services
  • Using wild cards like $ or * to limit the search accordingly

 Databases to be used for basic trademark search?

There are plenty of databases that are available these days that a searcher can use; some of them are free while some are subscription based. If we leave subscription there are many free databases that can be considered goldmines of trademark search. Some of them are mentioned below:

  • United States Federal Trademark Database like TESS
  • S. States individual databases
  • Multijurisdictional Database like WIPO
  • OHIM/CTM database for European Union Trademark


Why is it important to cover Common Law in basic trademark search?

Unlike patents, which are granted first-to-file basis, trademarks are granted on first-to-use basis wherein a mark will be deemed valid even if it is not registered, as long as you have the proof of use. Such regulatory norms necessitate the need of common law search wherein various non-government databases are searched to ensure if the mark is already in use and a valid trademark. Some of the important databases that can be used to search for common law searches are:

  • SEC filings and top Internet search engine results
  • Business names & records
  • Financial sources (like Hoovers, Dow Jones, Standard & Poor)
  • Yellow pages
  • Top newspapers
  • Industry news

In case you are looking for basic trademark search services visit our order now page.

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