On a daily basis our firm receives calls from potential clients who are under the impression that their desired trademark is clear because they ran a trademark search on the government’s site (www.USPTO.gov) and no results were returned.
As we will see in a moment, just because there is no exact hit for a desired trademark, does not guarantee that the trademark is clear. A much more in depth search is required before drawing that conclusion. In fact, after conducting thousands of searches over the last 10 years, our firm still spends hours conducting each search we do, and, has no less than three different people reviewing each search.
The US Government even puts the following disclaimer on its publicly available trademark search tool (TESS)”
“Warning: After searching the USPTO database, even if you think the results are “o.k.,” do not assume that your mark can be registered at the USPTO. After you file an application, the USPTO must do its own search and other review, and might refuse to register your mark.”
The reason the USPTO presents this disclaimer prominently on its website is because the standard by which an examiner will judge your trademark is whether or not it will create a “likelihood of confusion” in the marketplace. By that standard, an existing trademark does not need to be identical to your desired trademark in order to be cause a rejection. Using the ‘free form’ tab on USPTO.gov will help you expand your search to look for these similar trademarks.
With that said, we have compiled a primer below on how to do a better trademark search on your own. It is by no means an exhaustive list that will apply to all trademarks. Please note that nothing provided below is legal advice. We suggest using a law firm to conduct your trademark search and file your application. Even using the tips below, you can still miss things that an experienced trademark search specialist would catch.
To conduct a online trademark search you need to start by heading to USPTO.gov and under the trademark tab click the following: “Searching Trademarks” > “Search Trademark Database” >> “Basic Word Mark Search” >>> “Free Form”.
Once you have arrived at the ‘FREE FORM’ trademark search tool in TESS, you need to think about the following four parameters.
- Active vs inactive trademarks
- Your trademark name
- International class
Trademark Search Parameter 1: Live vs Dead
The first parameter we are going to set will look for active, or “live”, trademarks. Many trademarks are “dead” because they either were not renewed, the applicant failed to provide proper information, or there was a similar pre-existing trademark that caused its refusal. It is always a good idea to look for similar dead trademarks, because this can give you an insight as to the criterion the examiner used to reject the mark and thereby see if it might equally apply to your desired trademark. That being said, for our purposes we are only going to search for live marks. Start with:
Trademark Search Parameter 2: Name of trademark
To repeat: the USPTO will reject your trademark if it is similar to a pre-existing trademark — it does not have to be an exact match. Therefore, you will want to run your search in such a way to find any similar marks that exist. But first, we will start by making sure an exact match does not exist.
Let’s imagine our trademark is “Zoxing Clothing”. We could run the following search:
Zoxing[comb] and Clothing[comb] and Live[ld]
(Notice that we use “and” in between our parameters to tell the software to search for all of the parameters.)
Just because that search returns no results does not mean we are out of the woods yet. “Clothing” is a generic word that you cannot trademark, so we will try running the search without it.
Zoxing[comb] and Live[ld]
Although that search returns no results as well, we still need to go further. We now need to look for similar marks. To do so we will use the asterisk. The asterisk tells the software to check for any letters or numbers that come after it. For example, “Zox*” could return results like “Zox” or “Zoxer” or “Zoxng” (notice the missing ‘i”). So we will try it:
Zox*[comb] and Live[ld]
In this case, 19 results are returned. 19 results are not much to scan through, but what happens if we put the asterisk at the front of the word?
*xing[comb] and Live[ld]
Now we get 859 results, which is common. A lot of searches will return hundreds or thousands of results. In that case you will want to use additional parameters to narrow your search.
Trademark Search Parameter 3: International Class
The government has broken down all goods and services into 45 different classes. Be sure to check all classes that may be similar to your mark. For instance, if you are selling clothing (Class 025), you will also want to check jewelry (Class 014), handbags (Class 018), and retail store services (Class 035 and an old classification in Class 042), among others. To figure out which class ID is best for your trademark, follow this link: https://tmidm.uspto.gov/id-master-list-public.html and enter your goods and/or services in the search field.
Now we try our search again adding in the international class:
*xing[comb] and 025[ic] and live[ld]
We now get the far more manageable 147 results. Continue to run searches like this varying the international class to the related classes we mentioned above. Also remember to vary the trademark name in each class that you search.
Trademark Search Parameter 4: Goods/Services
Because relevant goods or services can be hidden in other classes, it’s always a good idea to run your search without any class ID, and instead focus on the goods/services. For instance:
Zox*[comb] and cloth*[gs] and live[ld]
You’ll notice the asterisk after “cloth*”. This ensures we’ll get results like “Clothing” “Clothes” “Cloth” all with one search parameter. The goods/services parameter can be combined with all of your other parameters, or used in lieu of the international class parameter (as is done above.)
In closing, running a trademark name search online isn’t rocket science, but it is highly nuanced and, as a result, requires experience. For these reasons, it is highly recommend that you engage a trademark attorney to assist with your trademark search. The experience an attorney brings to table in conducting trademark searches will provide you with a full and clear picture of the trademark landscape, and your application will be drafted and filed to ensure that you get the best chance of receiving an approval from the USPTO.