Filing a trademark could be the best possible way to protect your products and services from unlawful uses. However, a successful and effective trademark filling begins with a comprehensive, accurate and meaningful U.S. trademark search. These searches give us a complete idea about whether we should move ahead with our intended mark or should we reconsider filing application for the intended mark.
Filing a trademark application and doing a trademark search in U.S. is comparatively easier than other countries due to the availability of a user-friendly trademark search database, the TESS (Trademark Electronic Search System). The TESS is a federal search database provided by the United States Patent and Trademark Office for business and trademark owners to gather relevant information pertaining to business and trade operating from the jurisdiction of United States.
However, a complete trademark search is possible only when you are acquainted with the search features of the database, various operators those are provided by the database and their implications to search.
This article is aimed at underlining the basic steps that a trademark search professional should employ while doing a trademark search. Here are some of the important steps.
Identify your intended products and services- When you are about to file a trademark application you must have decided your products and services in advance, still, it is important to make a list of all those products and services you are intending to sell with your brand names. Refer your competitors to see what terminologies they are using for the same products that you are intending to sell. This helps make your trademark search more appropriate and broad.
Refer to U.S. Acceptable Identification of Goods and Services Manual (ID Manual) for Class- 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.
The USPTO separates goods and services into various classes, which are governed by international treaties. In order for an applicant to receive a trademark registration, that applicant must describe the goods and/or services to which the mark applies, and must identify the classes into which those goods and/or services fall.
If the description is vague or does not match the content permitted in the classes claimed, then the application may be rejected until the applicant provides an acceptable description. By using the language set forth in the Manual, the applicant can be certain that the application will not be rejected on such a basis. With the ‘Class’ we can make our search more specific and targeted as such search lists only those products that fall under this category.
Develop a trademark search strategy- Once you have the list of keywords, terms, and key-phrases start formulating a comprehensive and full trademark search strategy that can give you the desired result. This can be achieved by doing ‘exact match search’ using operators like AND, OR or NOT, replacing vowels and consonants at specific place to find synonyms.
Choose the type of search that meets your requirements- There are three different types of search options those are available to trademark search professionals in the Trademark Electronic Search System database depending upon the level of expertise a searcher is having. A searcher can use any of these options as per their need and requirements.
Use various features and opportunities available in the TESS- There are various features (operators, wild cards and fields) those we can use to make our search even more accurate, specific and targeted.
Stated simply, U.S trademark search thus can be immense importance if we are well-acquainted with the features of this search database. However, viewing the complexity of the database it can be of overwhelming for uninitiated and here comes the importance of trademark search firms which are experienced and well-trained in such searches.