Generally, if you run a USA trademark search using the USPTO website and no results appeared, your desired trademark is good to be used. This is a common notion held by clients. However, this practice is not foolproof. A mere absence of an exact hit for the desired trademark does not ensure that the particular trademark is available for us. It requires an in-depth search that is best handled by an experienced trademark specialist.
To perform a USA trademark search, there are many elements that we leverage to make our search reports more approachable and information-rich for our clients. Some of the key parameters are listed below:
- Trademark Name
- Pseudo Mark
- Design search code
- Live and dead marks
- Proper classifications
- Goods and Services
Trademark name search is the primitive yet most important thing we search to ensure a unique trademark. USPTO will reject the trademark if it is similar to any existing registered trademark. Thus, USA trademark search must run in such a way that all similar registered trademark names get listed. Nonetheless, in the first place, we need to make sure that an exact match doesn’t exist.
Also Read: Importance of Trademark Name Search
You must exclude the pseudo marks while conducting a USA trademark search. These marks refer to translations, correct spellings of deliberate misspellings, phonetic or similar sounding marks, spelled-out abbreviations, and so on. For example, ca$h4u would have a pseudo mark of “cash for you”. If the mark is a misspelling of some other word or something like that, the USPTO may code a “pseudo mark”.
Also Read: Global Trademark Search – A Wise Decision
Design search code
You must take care of the design search codes while searching for a design to avoid any counterfeiting. The mark must not include a design element (that is, something other than merely stylized letters). Otherwise, one or more “design codes” will describe the design element.
These codes are six-digit numbers, arranged in three two-digit groups. The first two digits signify a general type of design – for example, 05 for “Plants“, 11 for “Household Utensils”, 26 for “Geometric figures and solids” or 28 for “Inscriptions in various characters”. The USPTO has a “Design Search Code Manual” available on their website, which aids in carrying out the USA trademark search.
Live and dead marks
This is the next important criterion we search for i.e. Live or Dead Marks. A live trademark indicates that the mark is still in use. The dead trademarks are the trademarks which did not undergo the renewal process (applicant failed to provide proper information). Moreover, they also represent the trademarks that were similar to existing registered trademarks. However, if an entry is “dead”, it does not mean that the mark is no longer in use. The owner may still use the mark and has failed to follow the required procedures to keep the application or registration alive. We should keep these things in mind to see if the same rejection criteria apply to our trademark search also or not.
One can divide all goods and services into 45 different classes. 01-34 are goods and 35-45 are Services. We should try to cover related classes as well as the provided classes. For example, if a client provides us with electronic equipment (class 009), as a good practice we will cover class 42 as the related class.
Goods and services
One might come across a situation where goods and services fall in other classes as well. Therefore, we presume that relevant goods and services can be hidden in other classes. Hence we always run our USA trademark search with goods and services as well. This is to catch any possible conflict that may fall under another class.
Also Read: What is the New USPTO Trademark Rule?
If a part of the mark is merely descriptive, the owner might have to expressly disclaim any rights in that part of the mark, except as part of the mark. For example, a registration for “John’s Ice Cream” would have to disclaim “Ice Cream” apart from the mark (John’s) as it is descriptive. Any mark without a disclaimer of the sold product may lead to disputes.
TMReady’s state-of-the-art trademark services provide a unique opportunity for clients to watch for trademark infringement. Click here to know more about our Trademark search solutions.
– Yogesh Kumar (Trademark) and the Editorial Team