A search of pending U.S. trademark applications and registered U.S. trademarks should be conducted in order to determine if a registered or pending mark for the same or similar goods or services would be sufficiently similar to be likely to cause confusion in the mind of a consumer, and thus prevent registration of a proposed trademark on the United States trademark registry. While such a search is not required, it is advisable to do so.
The U.S. Patent and Trademark Office has provided the Trademark Electronic Search System (TESS) for searching pending U.S. Trademark Applications and registered U.S. Trademarks. TESS can be utilized to search for registered or pending marks in the U.S. Patent and Trademark Office (USPTO) database including word and/or design elements.
TESS can be searched in a number of different ways, such as the mark name, goods, services, applicant name, design description, etc. The number of results which are encompassed can also be broadened or narrowed using certain key search techniques. For example, by searching a keyword as a punctuated mark with the search code [MP], results will be identified including the keyword, as well as any punctuation characters which are incorporated into the keyword. This will generally narrow the results returned. In contrast, a non-punctuated mark [MN] search removes any and all punctuation characters from the keyword being searched. This will generally yield more results since the results are not limited by punctuation.
According to another search technique more search results can be identified by the utilization of truncation symbols for a more efficient search. For example, the truncation symbol * can be utilized before and/or after a word to identify marks which include other characters at the front and/or rear of identified marks. Accordingly, a search for *GIG* will retrieve marks that have the word segment GIG somewhere in the middle of the mark, with other characters at the front or rear of the mark.
Further, if the mark consists of more than one word, multiple key words can be searched at the same time in order to reduce the number of “hits” or marks identified in TESS. Additionally, since a mark can be refused registration with the USPTO for having a similar sound, multiple variations of the spelling of word marks should also be searched.
Another search strategy to limit the number of “hits” returned is to search word and/or design elements of the mark in association with keywords which would likely be found in a description of the goods or services with which you intend to utilize your mark.
An additional search strategy for identifying potentially problematic marks in TESS which are registered with or pending in the USPTO, is to search key words of the mark in association with goods or services which are related to your goods or services. For example, rather than just searching, for example for dog food, the search should be expanded to encompass pet supplies and livestock feed in order to more efficiently identify any potentially problematic pending or registered marks.
In some instances, it is also prudent to extend your trademark search beyond the confines of the U.S. Patent and Trademark Office since use of a mark in commerce can provide certain common law protections against infringement. For instance, where it is anticipated that a large amount will be expended on advertising, it may be worth having a third party search conducted for state trademark databases, as well as common law usages such as business names and domain names. Although these expanded searches are considerably more expensive, such a search may be justified in light of anticipated expensive advertising costs, and the need to avoid having to change the name after incurring such costs. Further, such an expensive search can be justified if a claim for trademark infringement is avoided, based on common law usage of a trademark.
From the foregoing, it is apparent that searching for registered or pending trademarks which may be potentially problematic for purposes of obtaining a federal registration and/or determining the risk of your infringement of someone else’s mark can become quite complicated. Taylor IP regularly conducts trademark searches and can effectively and efficiently conduct a search and render an opinion as to registrability of your mark and assist you in identifying potential trademark infringement claims based upon our findings.
