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; andEverything 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); andDomain names, (Not trademarks).
4 TRADEMARK SEARCHINGWhy 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 SEARCHINGImportant 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; orThe 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 SystemAvailable 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: SWEETGoods, Computer software for creating dessert recipes.Results: Over 4,800 hitsTESS
12 TRADEMARK SEARCHINGHow 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 SEARCHINGNote 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 SEARCHINGTo 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 SEARCHINGSo 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 SEARCHINGSearching 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
19 TRADEMARK SEARCHING Search example: Goods:, Sun block, in international class 3Design Search Code ManualTESS
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; BUTthat 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 SEARCHINGIf 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.
25 Prosecution Pitfalls Likelihood of Confusion One of the main reasons for refusalPurpose of searching – to try to avoid picking a mark that is “confusingly similar” to another markQuestion – 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/servicesExamples: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 descriptiveExamplesSKINVISIBLE 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 surnameExamples: McDonald’s, WeberIf mark has other non-surname significance, not “merely” a surnameExamples: 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!) refusalsSupplemental Register – for terms capable of becoming marks; orSecondary 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 markShould be depicted precisely as you are, or intend on using itOnly one mark per applicationImportant! After filing, only “non-material”, i.e., minor changes, may be made
35 Prosecution Pitfalls Drawing Pitfalls include the following:Drawing is not clearExample: drawing is blurry, poor quality or too smallDrawing describes markExample: “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 markExample: “likeness and image of Elvis Presley”Not allowed – would include different posesMake sure drawing only contains mark sought to be registeredDrawing attached is replica of specimensExample: 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 markShould be concise, clear and accurateCommon PitfallIdentification is unclear or ambiguousExample: “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 scopeOriginal 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 atcall 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 usedGenerally, a specimen must be submitted before a mark can be registeredException – applications based on foreign registrations
41 Prosecution Pitfalls Types of Specimens for Goods Acceptable specimens for goods include:LabelsTagsContainers, packagingDisplays associated with the goods, i.e., point of sale material, banners, menusNot acceptable: Advertisements, promotional matter, business cards, invoices
42 Prosecution Pitfalls Types of Specimens for Services Acceptable specimens include the following:Advertisements, promotional materialBusiness cards, letterhead - but only if services are referencedBrochures, hand-bills, direct mail leafletsGenerally, 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 pageExample: Drawing of mark is for SNAP RUST BUSTER while specimen shows RUST BUSTERThe 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-useThis may give you additional time to show acceptable use
45 Prosecution Pitfalls Owner of Mark Identifying the Owner of the markOnly the owner of mark can file the application. If it is filed by someone else, the application is voidExample: 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 SMOnly 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 issuesAvoid waiting until the last minuteFile a timely response
48 Prosecution Pitfalls Due Diligence Exercise due diligence - check status of application atCheck status every six months:after filing and until a registration certificate is issued; andafter 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 markBut, a refusal may indicate that another party may have rights in a similar mark or that there is some other issue
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