It is impossible to wipe off the worth of the traditional print media. However, in this digital age if you don’t do things online it turns out detrimental for business goal. Same is the case with trademark search. We can’t ignore online trademark search as an act of searching all the relevant trademark search databases that are available online. This article is an overview of underlining those basic steps one usually undertakes while conducting an online trademark search.
We will craft our article assuming the fact that you represent a business operating from the jurisdiction of United States.
Understand the U.S Trademark Regulatory Norms
You can put a single search query on a trademark search database and proceed for online trademark search goal. However, it is important to understand the regulatory norms of that particular jurisdiction. According to the USPTO, trademarks are assigned on “first to use” basis. Here, a party which uses a trademark first, receives a trademark grant. It’s not necessary to file a trademark federally to get the proprietary right of the same.
However, not filing the trademark federally could limit the scope of the trademark in the entire Country. Thus, you can enforce your right only in the place of use and not. If you are not aware about the U.S. Trademark Law, you must go through the U.S. PTO Trademark manual. Apart from the U.S. PTO trademark manual, knowing the “Lanham Act” will be of great help.
The 1946 Lanham Act governs the deceptive and misleading use of marks to protect persons engaged in commerce against unfair competition.
Also Read: How to Perform Trademark Knockout Search?
Understand the Trademark Electronic Search System Database
The next step in online trademark search is to understand the Trademark Electronic Search System (TESS) database. This platform serves as the federal trademark search database available in the United States. Further, TESS is one of the most preferred trademark search databases to offer plenty of opportunities for trademark search professionals.
Apart from having a user-friendly interface, it has other search related tools including operators and fields. Thus, this tool can help us to refine our trademark search in various aspects. For more information on TESS database, read our previously written article “Understanding Various Features of U.S. PTO Trademark Search Database”.
Understand word mark search and image search
While Word marks are used to protect a particular word like tradename, image marks are used to protect visual presentation of a company like Logos. Doing trademark search for wordmarks are totally different from doing trademark search for images. For example, in case of image search referring the “Image Search Code Manual” is a mandatory while in case of word marks search it’s not required.
Also Read: Trademark Monitoring: Tools for Individual
Understand Phonetic Search
Phonetic equivalents are words that sound alike creating the possibility of confusion between the two words (for example ‘CAT’ and ‘KAT’). Phonetic equivalents are important because they indicate how an existing mark may be perceived by a consumer as, too similar to your proposed mark. If phonetically equivalent marks exist in the same industry there is a strong possibility of consumer confusion and the proposed mark may be rejected. Thus, it’s important for trademark search professionals to do phonetic trademark search as well.
Also Read: What is Comprehensive Trademark Search?
In case you wish to do a full online trademark search relying merely on the federal trademark search database like TESS is not enough. Since trademarks in the United States are granted on first to use basis there might be marks that are active and are not registered federally. And hence, there comes the importance of doing a common law trademark search wherein, we search other trademark search resources like SEC filings, Yellow Pages, White Pages, Financial Resources Pages (Dow Jones), top newspapers and top internet search engine results.