April 1, 2016

Complete Trademark Search

For those clients that want no stone left unturned in their journey of product launch, complete trademark search could be the best initiation point wherein apart from searching Near/Similar Marks, Phonetic Variations + Language Equivalents are also covered.

This complete trademark search package covers US Federal (Near/Similar Marks + Phonetic Variations + Language Equivalents) and Madrid (Near/Similar Marks + Phonetic Variations + Language Equivalents). Clients can use various add-ons with this package such as US States trademark search, Common Law trademark search, Canada and Mexico trademark search.

Sources that will be covered 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


 What purpose a complete trademark search will serve?

There are many purposes a complete trademark search may serve to people; some of them are as below:

Assess if a mark is available for registration: Before you register a name for your business or product it is important to ensure right at the beginning that the name is available so as to avoid rejection at the end of the process. A complete trademark search helps clients assess this by establishing if the mark is already registered or if it is likely to cause confusion with any other mark. Even if, the intending mark is not infringing someone else mark entirely but is diluting an existing one still businesses need to reconsider their mark as it may get rejection.

Generally, there are two goals that we chase while ascertaining availability of a mark, 1) ascertaining distinctiveness and 2) ascertaining registrability. Even if a mark is registered it doesn’t necessarily guarantee that it can’t be obtained as it may have been abandoned and /or the scope of the trademark may be extended only up to a limited geography and a particular domain.

Getting corporate name clearance: Searching the scope of corporate name clearance is another important purpose that it serves. Registering a corporate name for your business in a country like United States is a two-step process a) doing availability search for the trademark and b) getting clearance with the Secretary of State, Corporation Bureau or any other similar agency in the state in which the corporation is to be incorporated. A complete trademark search can help clients determine if the intended mark is eligible to get a corporate name clearance.

Ascertaining domain name availability: In this digital era, if you are not found online you are missing out a huge chunk of your potential customers and thus it’s important to have an internet address of your business at the earliest. And this journey starts with ascertaining the availability of the domain which you are intending to register.

Ascertaining Infringement Disputes: In an era, where we encounter trademark litigation every now and then, it is important to ascertain right at the beginning whether your mark is likely to infringe upon someone else intellectual properties. Likewise, if someone else has infringed upon your intellectual properties (like trademark) it’s important to assess it before you send a cease-and-desist-letter to the respective party. In either of the above-mentioned cases, we need to do a complete trademark search so as to ascertain whether we are moving in right direction.

Financings, Mergers, and Acquisitions: No matter whether you are looking for mergers, acquisitions or using trademarks for financial collaterals a thorough and complete trademark search of various brands is important. With a comprehensive trademark search, we can assess if the brand we are entering into agreement is worth investing our precious time and energy.

How to create search query for a complete 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 allow searchers 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’ wherein 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, canceled, 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 complete 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

Should you are looking for effective and complete trademark search, place order at our order now page.

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