Why Free Trademark Searches Don’t Work

By Josh Gerben, Esq.

(The following is a transcript of the video above.)

If you’re thinking about running a free trademark search, check out this video first. I’ll show you why that search is not that hot of an idea and how it can cost you some money in the long run. So when someone is offering you a free trademark search, they are really offering you the exact same thing that you can get at the government site, uspto.gov. And, one of the things we really want to know about this site is that it’s not a smart site. This is not a Google. There is no “did you mean.” So, if you’re off by a little bit where the words aren’t exactly the same that you’re entering and of a preexisting trademark, it’s going to act like there’s not a problem.

I’ll give you an example. Let’s look at this company, tiresetc.com. We registered their trademark. Well, if we go here and we want to do a free trademark search and we’ve entered “tires,” let’s say, as you can see, I’ve run this before, let’s say, instead of saying E-T-C, we spell out etcetera and we click “run.” Well, look, it’s telling me that there’s no records, that this would not be a problem. And so, in this case, I would think, “Hey, I’m fine to file,” and I would, and sure enough, I’d get rejected because of this guy right here, “tiresetc.com.” Now, one other thing I want to talk about, actually, two things that I want to talk about here, is how else I would run this search. Because, again, the free trademark search is just entering a term in here, plug and chug, and see what comes out. But, if I’m running this for a client, I’m going to want to do a lot, be a lot more in depth. And one of the things I’d want to look at here, “Tires” is very generic, but I’d still, just to be sure what look at “etcetera” on its own. So, what I would do is, I would go into this free-form thing. Now, I will make an entire video about how to enter what’s called these “boolean search terms” or “search limiters” here. Right now, let’s just look again at the limitations of free searches but, if you do want to learn how to do this, we’ll post a video on it.

So here, what I just want to check out is stuff like “automotive.” I want to see if there’s anything else that uses E-T-C that has to do with automotive stuff. But, the reason I’ve got this written down is I want to draw your attention to this, right here. Now, we have tips here–complicated tips–for searching the trademark I.D. manual but look down here, look at what it says here. It’s telling you that if you enter in something like “automotive,” only entries for services with the term “automobile” will be retrieved. Services with the term “vehicle” or “automotive,” will not appear in the result set. So, right here, there could be something that’s E-T-C that just has to do with tires, like the company we registered, or it could say “automobile,” in which case we wouldn’t get a result, or it could “vehicle,” it could say “transmission repair.” All those things won’t pop up.

So, another way that we can do it instead of just limiting, “Hey, what are the services or products they’re selling,” because in this case, I’m looking at automotive. We can look at classes. Now, let’s go back to “tires E-T-C” and look at this, right here. This is I-C, International Class, 035. The government has split all products and services up into 45 different classes. They all break down into these. Now, 3-5 is for retail store services so here, retail tire store services. But, if we go here and we look at, this is the trademark I.D. manual and we put in tires, look at all these different classes that also contain things like tires, class 1, class 3, class 7, class 8. Now, the reason for this is because the government has just been tacking on more and more things. It’s an ad hoc system. It wasn’t started with every product in mind or every service in mind so they keep kind of shoving stuff into different classes. But, I mean, look at this, we’ve got 8, 9, 11, 12, and then, finally down here, we go all the way down, we see retail tire stores. This is our guy right there. But, I would be concerned about anything that has to do with, in class 12, specifically, because class 12 is “tires,” and I would also be concerned with anything in class 3-7 because this has to do with auto repair, and I would be worried that an examining attorney would say, “Hey, you’re replacing tires that has to do with repair,” so we could reject something.

So, that’s it. I’m not trying to say that this is rocket science. I’m not trying to say that it’s impossible for you to run a free search. It’s just a matter of, “learning how to do it comes with experience.” As you can see here, Trademark Attorney Josh Gerben, over 5,500 trademarks. That’s a lot of experience. So, you just get to know how the examining attorneys will judge a particular trademark, and you just get to know those forty-five different classes in and out. And so, as an attorney and you use Josh, he will be sure that you don’t go flushing money down the drain by registering a mark that’s just doomed to be rejected. Thanks guys for watching this video and check back for more videos coming pretty soon.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.