1. TRADEMARK SEARCHING

2. TRADEMARK SEARCHING What’s meant by “trademark searching?”
A business can’t use or register a trademark or service mark if some other business already owns the mark. So before selecting a mark, a business owner conducts a search.
Exactly what is being “searched” for?
Marks owned by others that are identical OR similar to the mark the business wants to use, AND, that are used to identify products or services that are the same as, OR related to, the products or services offered by the business.

3. TRADEMARK SEARCHING What is it that’s being “searched?” Two sources:
The records of the USPTO. Includes all registered marks, and all marks in applications for registration that are still being reviewed; and
Everything else. Includes, but is NOT limited to:
Phone books and yellow pages;
Print and electronic media advertisements;
The internet;
State registrations;
Trade names, (Not trademarks); and
Domain names, (Not trademarks).

4. TRADEMARK SEARCHING
Why bother searching “everything else?” Why not search only the USPTO databases?
Trademark registration is very useful, but not required: businesses can gain legal rights in marks simply by using these marks. So a search of only the USPTO databases may not be sufficient.
Rights gained by use rather than registration are called “common law rights” and searches of sources other than the USPTO databases are called “common law searches.”

5. TRADEMARK SEARCHING
Important caveats about this afternoon’s discussion on searching:
We will only discuss searches of the USPTO databases, not common law searches.
The discussion about searching the USPTO database is introductory and is not intended as a full-fledged training in searching.
If you conduct or are considering conducting a search, or otherwise trying to determine what rights you may have in a particular mark, you may wish to retain a professional search firm. Experts at these firms are trained to conduct searches.

6. TRADEMARK SEARCHING Important caveats, continued.
You may also require the services of an attorney. As some examples will show, it is often difficult to evaluate the results of a search, and attorneys are trained to make those evaluations.

7. TRADEMARK SEARCHING Important caveats, continued:
If you perform a search of the USPTO database, and you don’t find marks you believe conflict with the mark you wish to use, do NOT assume that the USPTO will approve that mark for registration:
The USPTO’s own search may turn up a mark you missed;
The USPTO’s search may turn up the same marks you found, but the USPTO may disagree with your conclusion that those marks aren’t similar to your mark; or
The USPTO may refuse registration of your mark on some other ground.

8. TRADEMARK SEARCHING The USPTO’s On-line Search System:
Known as TESS, the Trademark Electronic Search System
Available at the USPTO’s web site.,

9. TRADEMARK SEARCHING Search example. Mark: TRINKET.
Goods: cosmetic creams in international class 3.
Note that all goods and services are classified in one of 45 classes.
USPTO WEB SITE

10. TRADEMARK SEARCHING Search example: Mark: SPARROW
Services: Cosmetics research, in international Class 42.
TESS

11. TRADEMARK SEARCHING Searches that produce numerous “hits.”
The searches for SPARROW and TRINKET did not result in too many “hits.” But what about the following example?
Mark: SWEET
Goods, Computer software for creating dessert recipes.
Results: Over 4,800 hits
TESS

12. TRADEMARK SEARCHING
How can these results be narrowed? Is it possible to conduct a search that will (hopefully) result in a list of all - - and only - - those marks that identify goods or services that are are the same as, or related to, the goods or services offered by the business conducting the search?
One possible method: search by classification. All goods and services are classified in one of 45 classes. For example, computer software is classified in class 9, cosmetic creams in class 3, and “business management and consultation” is classified in class 35. So a search can be conducted of all marks that (1) are comprised of or include SWEET, and (2) identify goods in the class into which software falls.

13. TRADEMARK SEARCHING
Note that the classification system is international: many countries utilize the system.
However, in the U.S., the system is used primarily for searching purposes, but in other countries, classification has even greater importance.

14. TRADEMARK SEARCHING
To determine which class computer software falls into, consult the Manual of Acceptable Identifications of Goods and Services. This shows that computer software is in class 9.
Then, go to TESS and in particular, to either the “structured form search” or the “free form” search options in TESS.
Note: the previous searches used the “new user form search,” which doesn’t allow searches of multiple fields. It only searches the “mark field,” that is, the trademark itself.
TESS

15. TRADEMARK SEARCHING
So by limiting the search to class 9, we’ve produced a list of 114 “hits” instead of more than 4,000 hits.
But if the first search result was too large, this second one was too narrow: by limiting the search to class 9, we excluded marks associated with various goods and services that aren’t the same as, but may still be related to computer software:
Examples: “Manuals in the field of software,” in class 16, and “computer programming for others,” in class 42.
One solution: TESS has a tool called “coordinated classes.” By selecting that tool and searching for a particular class, you find marks that identify goods classified not only in that class, but in related or coordinated classes as well.

16. TRADEMARK SEARCHING Point of all this:
There are endless wrinkles to the searching process, and it’s a good idea to turn to professional search firms, and to attorneys, for help. The most a business owner should attempt on her own is a “knock-out” search.

17. TRADEMARK SEARCHING
Searching for marks that include, or are comprised of, images, not only of words.
This type of searching is based on design search codes, numerical codes that are assigned to different objects.
The codes are set forth in the USPTO Design Search Code Manual

18. TRADEMARK SEARCHING Design Search example:
Services: “Restaurant services,”international class 43.
USPTO Design Search Code Manual
TESS

19. TRADEMARK SEARCHING Search example:
Goods:, Sun block, in international class 3
Design Search Code Manual
TESS

20. TRADEMARK SEARCHING One more searching wrinkle: dilution.
As we’ve seen, two marks are confusingly similar if (a) the marks are identical or similar and (b) the goods or services associated with the marks are the same or related.

21. TRADEMARK SEARCHING But what if:
The mark you want to is similar or identical to some other mark;
the goods or services associated with your mark are entirely different from the ones associated with the other mark; BUT
that other mark is FAMOUS? (e.g., COCA-COLA®, XEROX®)
In that case, you may be barred from using the mark, because you may be diluting the economic value of the mark.

22. TRADEMARK SEARCHING
If a mark is “famous,” and whether, if it is famous, your use of the same or a similar mark dilutes the famous mark is a difficult legal question, so its probably necessary to consult a lawyer.

23. TRADEMARK SEARCHING Wrinkle to the dilution wrinkle:
Even if the mark isn’t famous throughout the marketplace, it might be famous in your particular business niche, that is, in the particular industry in which you work.

24. AVOIDING PITFALLS
IN PROSECUTION

25. Prosecution Pitfalls Likelihood of Confusion
One of the main reasons for refusal
Purpose of searching – to try to avoid picking a mark that is “confusingly similar” to another mark
Question – Would consumers who encounter the same or similar mark in connection with the goods or services in question be likely to believe that they originate from the same source or are somehow connected?

26. Likelihood of Confusion 2 Main Factors
Are the marks the same or similar in sound, appearance or meaning?
Are the goods/services the same or related in some manner?
FANTASTICS for “computer games”
PHANTASTIX for “computer games”
OPUS ONE for “wines”
OPUS ONE for “restaurant services”

27. Prosecution Pitfalls Likelihood of Confusion
Which marks are “confusingly similar”?
WISE for “power drills”
WYSE for ‘screwdrivers”
ZEPHYR for “t-shirts”
ZEPHYR for “air freshener”
VIBRANT for “laundry”
PROUD for “laundry”

28. Prosecution Pitfalls Mark is Descriptive
Picking a mark that “merely” describes an ingredient, quality, characteristic, function or purpose of the goods/services
Examples:
AMERICA’S BEST POPCORN for “popcorn”
5 MINUTE GLUE for “glue that sets in five minutes”

29. Prosecution Pitfalls Mark is Descriptive
Note: Marks that only suggest something about a product are not descriptive
Examples
SKINVISIBLE for “transparent medical tape”
HERCULES for “barbells”

30. Prosecution Pitfalls Descriptive or Suggestive?
COPPERTONE for “suntan oil”
QUIK-PRINT for “printing services”
UNDERNEATH IT ALL for “undergarments”
BUG MIST for “insecticide”
APPLE for “computers”

31. Prosecution Pitfalls Surname
Picking a mark that is “merely” a surname
Examples: McDonald’s, Weber
If mark has other non-surname significance, not “merely” a surname
Examples: Cook, Brown

32. Prosecution Pitfalls Surname
But shouldn’t I have rights in my name?
The issue is whether consumers would immediately perceive the term as just someone’s name or as a source-identifier (i.e., trademark)

33. Prosecution Pitfalls Options
Possible ways to try to overcome descriptiveness and surname (but not likelihood of confusion!) refusals
Supplemental Register – for terms capable of becoming marks; or
Secondary meaning – consumers have learned to look beyond the primary (descriptive) meaning of mark

34. Prosecution Pitfalls Drawing
Provides public notice of what you are claiming to be your mark
Should be depicted precisely as you are, or intend on using it
Only one mark per application
Important! After filing, only “non-material”, i.e., minor changes, may be made

35. Prosecution Pitfalls Drawing
Pitfalls include the following:
Drawing is not clear
Example: drawing is blurry, poor quality or too small
Drawing describes mark
Example: “design of a blue star” instead of an actual depiction of a blue star

36. Prosecution Pitfalls Drawing of Mark
Drawing includes more than one mark
Example: “likeness and image of Elvis Presley”
Not allowed – would include different poses
Make sure drawing only contains mark sought to be registered
Drawing attached is replica of specimens
Example: advertisement from newspaper showing promotional text and mark.

37. Prosecution Pitfalls Identification of Goods/Services
Tells the world what products or services are associated with the mark
Should be concise, clear and accurate
Common Pitfall
Identification is unclear or ambiguous
Example: “paper goods”, “computer services”

38. Prosecution Pitfalls Identification of Goods/Services
You can limit, clarify or delete items in the ID, but cannot add or expand its scope
Original ID – “power tools” (too vague)
Can amend to “power tools, namely, saws and drills” (clarifying)
Cannot amend to “power saws and hand operated screwdrivers” (expanding)

39. Prosecution Pitfalls Identification of Goods/Services
If possible,
use Acceptable Goods and Services Manual available online at
call the Examining attorney to try to resolve ID issues over the phone

40. Prosecution Pitfalls Specimens
Specimens are “real world” examples of how a mark is used
Generally, a specimen must be submitted before a mark can be registered
Exception – applications based on foreign registrations

41. Prosecution Pitfalls Types of Specimens for Goods
Acceptable specimens for goods include:
Labels
Tags
Containers, packaging
Displays associated with the goods, i.e., point of sale material, banners, menus
Not acceptable: Advertisements, promotional matter, business cards, invoices

42. Prosecution Pitfalls Types of Specimens for Services
Acceptable specimens include the following:
Advertisements, promotional material
Business cards, letterhead - but only if services are referenced
Brochures, hand-bills, direct mail leaflets
Generally, the specimens must show the mark and reference the services

43. Prosecution Pitfalls Specimens
The mark as displayed on the specimens must match the mark on the drawing page
Example: Drawing of mark is for SNAP RUST BUSTER while specimen shows RUST BUSTER
The specimens must support the goods/ services listed in the identification

44. Prosecution Pitfalls Specimens
If you can’t provide acceptable specimens, consider amending the application to intent-to-use
This may give you additional time to show acceptable use

45. Prosecution Pitfalls Owner of Mark
Identifying the Owner of the mark
Only the owner of mark can file the application. If it is filed by someone else, the application is void
Example: The actual owner of the mark is XYZ Company, but its president, James Smith, is listed as the owner

46. TM or SM Trademark Symbols
Office does not control the use of these symbols:
TM or SM
Only federally registered marks may appear with the registration symbol:

47. Prosecution Pitfalls Responding to Office Actions
When responding to Office actions:
Respond fully to all issues
Avoid waiting until the last minute
File a timely response

48. Prosecution Pitfalls Due Diligence
Exercise due diligence - check status of application at
Check status every six months:
after filing and until a registration certificate is issued; and
after filing an affidavit of use or renewal until notice is received that the filings were accepted

49. You get an Office action Can you still use your mark?
Office refusals or requirements only concern the registrability of your mark, not the right to use the mark
But, a refusal may indicate that another party may have rights in a similar mark or that there is some other issue

50. TRICIA MCDERMOTT THOMPKINS
CONTACT INFORMATION
MERYL HERSHKOWITZ
Managing Attorney
US PATENT & TRADEMARK OFFICE
LAW OFFICE 116
(571)
TRICIA MCDERMOTT THOMPKINS
Senior Supervisory Attorney
LAW OFFICE 101
(571)