Trademark Search is one of the most important elements in overall trademark registration process. Though it is not mandatory as per statutory rules, still, it is advisable because down the lines it is going to serve you a lot. No matter whether you wish to avoid others from using your marks or you wish to avoid yourself reinventing the wheel. A through and complete trademark search can help you taste the water before adopting a mark. This article is aimed at helping companies doing a full trademark search for their intended mark.
But, before we move on to the process of trademark searching it is important to define a Trademark.
What is a Trademark?
A trademark is a unique expression that can be used to distinguish products/services of a particular legal entity from other players operating in the same domain. The word trademark is a comprehensive term that is not merely confined to a word or logo but can also be:
- Slogan
- Photograph
- Logo
- Graphic
- A Color combination
- Sound
- Smell
What can’t be trademarked?
Though availing benefits of trademarks is a legal right granted to business owners by the federal agencies, still, it is not absolute and there are many rules those need to be fulfilled by applicants. If a mark doesn’t satisfy these criteria one may risk rejection. Following are the cases when a trademark is not granted:
- Marks that are descriptive (e.g. super, best, cheap, one dozen)
- Marks that are common to your trade (ones that have become well accepted in relation to your trade and do not distinguish the goods or service you are offering)
- Marks that could offend or promote immoral behavior
- Deceptive marks (ones that could misrepresent the nature, quality or geographical origin of the goods or services)
- Marks that are identical to earlier marks
- Marks that could cause confusion (similar or identical to an earlier mark and in relation to similar or identical goods or services provided by the owners of the earlier mark)
- Marks that are identical or similar to well-known Marks
Steps of doing a comprehensive and full trademark search:
A complete trademark search can be overwhelming for those who are uninitiated and are new in this domain. Though it is a complex and structured process we can list out some of the important steps in doing a trademark search. Here are those steps:
Step 1: Describe the goods or services being sold with your intended mark.
Step 2: Identify specific term/terms used by industry professionals and the respective federal agency (e.g. USPTO) for your goods or services
Step 3: Determine international class of the intended mark
Step 4: Identify terms for related goods/services, and determine their classes
Step 5: Perform the search
Step 6: Record your results
Step 7: Review your results
Step 8: Perform a common law trademark search
Resources for doing a trademark search:
Assuming that you have a business operating from the jurisdiction of United States, following are the important resources those we can use to do a comprehensive and full trademark search.
- Trademark Electronic Search System (TESS)
- State Database
- Google Web
- Various business name databases
- Various domain name databases
All we can say is that Trademark Search is a complex and structured process wherein searchers are required to adhere to various rules put forth by the respective federal agencies. For uninitiated doing a trademark search can be an overwhelming task however once you wrap your mind around, it becomes easy for the searcher to do a trademark search.
