Though the worth of traditional print media can’t be wiped off, still, in this digital age if you don’t do things online it will be detrimental for business goal. Same is the case with trademark search, wherein we can’t ignore online trademark search, which is an act of searching all the relevant trademark search databases that are available online. This article is an overview of underlining those basic steps those we usually undertake while doing a trademark search online.
We will craft our article assuming the fact that you are a business operating from the jurisdiction of United States.
Understand the U.S Trademark regulatory norms: Even before you put a single search query on a trademark search database and proceed for online trademark search goal, it is important to understand the regulatory norms of that particular jurisdiction. In United States trademarks are assigned on “first to use” basis wherein a trademark is granted to a party that has used that trademark first. 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. Means you can enforce your right only in the place of use and not. In case you are not much informed about the U.S. Trademark Law and wish to know, then, going through the U.S. PTO Trademark manual could be the best way. 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 in order to protect persons engaged in commerce against unfair competition.
Understand the Trademark Electronic Search System Database: Once you knew the U.S. trademark regulatory norms the next step in online trademark search would be to understand the Trademark Electronic Search System (TESS) database, which is the federal trademark search database available in the United States. The TESS is one of the most preferred trademark search databases that offer plenty of opportunities and scopes for trademark search professionals.
Apart from having a user-friendly interface, it has plenty of search related tools like operators and fields those we can use to refine our trademark search. In case you wish to understand every feature of TESS database our previously written article “Understanding Various Features of U.S. PTO Trademark Search Database” could be of immense use.
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.
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.
Understand common-law: 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.