Conducting a trademark search is something that requires in-depth knowledge and understanding of trademark law and is possible only for trademark search professionals who are skilled in this art. And hence, it has become important for people to know what works and what doesn’t in the domain of trademark search. Best practices for conducting a trademark search is something that every searcher should be acquainted with. This article is all about those rules.
Trademark search or commonly called as TM search is an art that requires extensive knowledge of trademark search databases and using them to their full extent. No matter whether you are looking for US trademark searches or Canadian trademark searches there are some best practices that should be followed by every trademark search company.
Best practices for conducting a trademark search
Create the List of Words: The first step while doing searches for trademarks is to come-up with all the words and their synonyms that could potentially describe your product or service. Include brand names and company names while creating potential words for doing trademark search.
Use Acceptable Identification of Goods & Services Manual: Once you come-up with the words and phrases that could describe your products or services a trademark searcher should log-on to “The Acceptable Identification of Goods and Services Manual” at http://tess2.uspto.gov/netahtml/tidm.html. The Acceptable Identification of Goods and Services Manual is a directory maintained by the United States Patent and Trademark Office outlining the different categories of goods and services recognized by that office with respect to trademark registrations, and setting forth the forty-two international classes into which those goods and services are divided.
Mind the Phonetic Words: This is another important practice that every trademark search service provider should consider where we compile a list of words that sound the same as your prospective trademark and those with unconventional spellings. Doing trademark search with these keywords can help searcher broaden their search and make it a comprehensive one.
Do a Simple Google Search: Sometimes what can’t be done by specialized trademark database could be done by Google. As there are cases when a particular trademark is not registered still you can be held liable for using someone else brand. Here search engines like Google and Yahoo could help searcher find data those are important but are somehow missed by specialized databases. There might be cases where a trademark may not be registered, but is already in use and common law rights may have been established that could prevent registration by your company and/or result in a potential legal dispute.
Search ICANN for the Domain Name: ICANN is the Internet Corporation for Assigned Names and Numbers. On their website, you can find out if a particular website domain name is being used and who owns it. This may also help us gain some valuable data.
Determine International Class: Do a simple Google search of your list of words and prospective trademark to see what comes up. Sometimes a trademark may not be registered, but is already in use and common law rights may have been established that could prevent registration by your company and/or result in a potential legal dispute.
Search Logos and Designs if Needed: Sometimes logos and designs help trademark search professionals gain some invaluable data that is of utmost importance. And hence, it is important not to leave any stone unturned and we can do this by searching Logos and Designs along with word marks.
Expert Analysis: Irrespective of the fact whether you are a trademark search service provider or a company looking for trademark search services an expert analysis of all the searches is required as it will help clients gauge the real scope of a particular mark.
Though there are innumerable numbers of ways through which you can perform a trademark search still the above-mentioned facts could be considered as some of the best practices while doing a trademark search for brands and companies.