Before submitting a trademark application, a search for pre-existing trademark applications and even registered trademarks is required. One can conduct a trademark search by supplying the word mark and the class that the investigation falls under.
According to the NICE trademark classification system, trademark applications are filed under 45 different classifications. Each trademark class represents a separate collection of goods and services. An individual should use trademark class finder tools to locate the trademark class for specific goods or services.
In light of the aforementioned, we focus on using trademark search databases as trademark search tools in this blog post.
Trademark search tools
To determine whether a trademark is currently being used in commerce, one can search for a trademark on a database, typically on the USPTO website.
Importance of trademark search tools
An Internet trademark search will reveal the names of any brand names or trademarks that have already been registered and may sound phonetically similar to your own.
It is possible to determine whether a brand name or trademark is included on a list of forbidden marks by looking at the list.
A trademark search will reveal information about related brand names if a brand name falls under the Vienna code categorization and includes a logo.
A trademark search is required to register the applicants’ trademark or brand mark logo under the Trademark Act. If a similar trademark exists in the registry, the name may be changed, or a new name may be chosen.
If another trademark with a similar meaning already exists, the recently applied trademark should be changed, or a new name should be chosen.
If the brand name is original, one may proceed to register the name. Before submitting a trademark application to register a trademark, it is always advisable to conduct a trademark search.
Overview of Using Trademark Search Databases
USPTO Trademark Electronic Search System (TESS)
The Trademark Electronic Search System (TESS) is a free search tool provided by the USPTO. It is accessible round-the-clock at http://www.uspto.gov/trademarks under “TESS search trademarks.”
The TESS help page at http://tess2.uspto.gov/webaka/html/help.htm provides instructions on how to search the USPTO’s database of registered and previously pending applications to see if any marks there could prevent the registration of your mark because of the likelihood of confusion, as well as some sample search strategies.
Before you apply, the USPTO will not conduct a search of your mark on your behalf. The USPTO will search your mark following filing, and as part of the examination of your application, it will inform you of its findings. The USPTO will decline to register your mark if it discovers that another registered mark or earlier-filed pending mark for relevant goods or services is confusingly similar to yours.
Benefits of using the TESS
The TESS facilitates the trademark application process by enabling web browser searches of the data related to active trademark applications and registrations. TESS offers to examine attorneys at the US Patent and Trademark Office access to the exact trademark text and picture database now available via the X-Search system.
The user can choose four search forms on the TESS start-up page. The new user form search offers straightforward word mark searching with frequently used alternatives.
The best option for inexperienced users is the Structured Form Search, which offers a straightforward search form for submitting a question. Users can enter more complex queries using the Free Form Search or Advanced Search. The Browse Dictionary option, which displays the counts of occurrences for those indexed terms, allows users to browse through the search indices to see indexed terms related to a given search phrase. The user can switch between the three search forms throughout the search session.
Other trademark search databases
The WIPO Global Brand Database
The WIPO Global Brand Database provides access to the following collections:
- Madrid System trademarks that are used internationally
- Geographical Indications and Appellations of Origin under the Lisbon System
- Under-6ter emblems
- World Health Organization INNs
- Trademarks from affiliated regional and national offices
These collections can be searched using keywords, names, numbers, products and services, comparable images, or any combination.
The EU Intellectual Property Office
The EUIPO, or European Union Intellectual Property Office, oversees registered community designs and EU trade marks. It collaborates with worldwide partners and national IP agencies to provide a similar design and trademark registration experience throughout Europe and the rest of the world.
Registering your brand or design makes commercial sense whether you are in the trade, manufacturing, or service industries.
With just one application, the European Union Intellectual Property Office (EUIPO), formerly known as OHIM until March 23, 2016, can provide you with exclusive rights for trade mark and design protection across the whole European Union (EU).
Through the Office’s online tools, you can search for registered trademarks using the two EUIPO databases, eSearch Plus and TMview.
The Canadian Intellectual Property Office
The majority of Canada’s intellectual property is administered and processed by the Canadian Intellectual Property Office. Patents, trademarks, copyright, industrial designs, and topographies of integrated circuits are among the areas of activity covered by CIPO.
The following two examples will help explain various search progressions:
Example 1: Looking up prospective trademarks’ availability
You run a telecoms company and wish to file a new trademark with the word “tele” in it.
- Select “TM lookup” from the drop-down box under “Select a search field.”
- Type “tele” and an asterisk (*) after the word. Continue by selecting “Search.”
- Evaluate the outcomes and contrast them with the particular trademark you had in mind.
Example 2: Looking for information about rival businesses
You run a company that provides online goods and services related to geographic data. Discover what trademarks your rivals have used before registering your own.
By choosing the “Goods and Services” option from the drop-down menu and typing “geograph*,” “data,” or “Internet” into the search bar, you can search your sector.
- Add the word “geography” to Criteria 1 along with an asterisk (*).
Select “Goods and Services” from the drop-down box under “Select a search field.”
2. Add “data” as a criteria 2 entry.
In Criteria 3, type “internet” as the keyword. (For both, use the “and” operator.)
A “Goods and Services” option should be chosen for both.
3. The “Search” button should now show your results.
The Australian Trade Mark Search
The Australian Trade Mark Search is the search and information discovery engine for publicly available trademark data.
It is an online resource offered by IP Australia, the Australian government’s intellectual property (IP) office. It enables people and companies to search the trademark database of Australia for already-existing trademarks.
Individuals and companies must first access the IP Australia website to use this tool. The website provides numerous resources and details on trademarks, such as the various kinds of trademarks, the procedure for registering a trademark, and commonly asked questions.
Users must go to the IP Australia website’s trademark search page in order to do a trademark search. Two search options are available on the search page: a quick search and an advanced search.
By entering keywords, such as a word or phrase, users can search for trademarks using the quick search option. A list of current trademarks that match the given keywords will be available in the search results. The results can be filtered by trademark type, status, and class.
Users can search for trademarks by a variety of parameters, including the trademark owner’s name, the trademark registration number, and the trademark class, using the advanced search option, which provides a more thorough search. Additionally, users can search for trademarks using a variety of filters, including the status of the trademark, a date range, and a list of goods and services.
Users can check the search results and examine the specifics of the existing trademarks after conducting a search. The owner, status, and class of the trademark are all listed, along with its registration number. Users can also see pictures of the trademark and the products and services it is registered to represent.
Types of Trademarks
1) Standard character marks
Compared to design or logo versions of your trademark, standard character marks cover the word(s) and offer the broadest protection. Additionally, they shield (provide protection for) the words displayed in a stylized design mark or logo, regardless of how it appears.
2) Design marks
Trademarks that feature designs or logos frequently undergo changes. A design mark or logo registration only applies to the specific design that was filed. Think about when a logo’s owner alters its appearance, for instance. The updated logo version has to be registered if there are major modifications.
It’s possible that the new logo won’t be protected by the previous logo’s trademark registration. Additionally, if the design has been altered, the trademark office might not renew the registration of the logo. A typical character trademark registration would include modifications to the logo’s design.
3) Collective marks
These are specific trademark kinds that associations and organizations own. A collective mark is used to draw attention to the exceptional features of a service or commodity that serves as a representation of a partnership.
4) Certification marks
A certification mark is a form of trademark that designates a product’s origin, material, quality, or any other particulars that the owner specifies. This sort of trademark’s primary goal is to set standards for any good or product and to provide the consumer with a guarantee of the goods.
This kind of trademark can also be used to demonstrate the actual standards of any product by demonstrating that the particular goods the consumer is receiving have undergone various tests and are of a high caliber. On packed goods such as shoes, clothing, toys, and electronics, certification markings are frequently used. The ISI and ISO marks are a few examples of certification markings.
1) Keyword search
The Trademark Electronic Search System (TESS) of the U.S. Patent and Trademark Office allows free searches of all trademark applications and registrations. You can also go to a Patent and Trademark Resource Centre or the USPTO’s Public Search Facility to seek out trademarks. Public access to these resources is unrestricted.
2) Structured search
The steps for conducting a structured search utilizing words and/or design marks are as follows:
select the search field and the search term; Select “yes” or “no” from the drop-down menu for the plurals; Select an operator is optional. Select a field for your optional second search. Select a search term for your optional second search string. Expand and filter your findings (if applicable) and submit. View your outcomes.
Consider altering your mark and conducting a new clearance search if you discover a live mark that is confusingly similar to yours and is being used on or in connection with products or services comparable to yours. Otherwise, if you file for registration, the USPTO might decline to register your mark, or the owner of the other mark might sue you.
3) Image search
Visit the USPTO website; click the “trademarks tab” and “searching trademarks drop-down” menu options; click the “trademark tab” from the horizontal menu; click the “TESS” title that appears at the bottom; Choose, for instance, “keys with heads of circular, oval, or lobed shape,” which is coded in category 14, division 11, sections 1 to 9 of the USPTO’s Design Search Code Manual (knowing the Design Search Code Manual is vital when it comes to doing an efficient and thorough image search). The most pertinent section for our search might be Section 2. Let’s choose the 14.11.02 code and look it up in the TESS database. Whether or not our defined picture search is valid or previously registered will be shown by the database.
Understanding Trademark Search Reports
A trademark search report is a thorough reference containing all the information about the trademark being sought.
Common Trademark Issues
1) Likelihood of confusion
When two trademarks are so similar to one another, and the goods and/or services they are used for are so connected, there is a high likelihood that consumers may mistakenly believe they are from the same source.
2) Generic or descriptive terms
Descriptive trademarks don’t identify or distinguish the source of your goods or services; rather, they simply describe a certain element of your products or services. Only under specific conditions, such as when your trademark acquires distinctiveness from widespread use in commerce for many years, is it registrable.
Generic “marks” are objects that refer to a product by name and are ineffective as trademarks. Generic devices, in contrast to descriptive marks, will not become trademarks, even if they are promoted to the point where consumers may definitively attribute secondary meaning to them.
3) Similar or identical marks
Identical trademarks are those that may be mistaken for another existing mark. Here, the word “similar” should be used to mean “deceptively identical.” This refers to a mark that is sufficiently similar to another that it may easily mislead or fool a typical consumer.
Trademark Search Tools for Business
Benefits of using trademark search tools for business
Early in the process of developing a brand, searching for and removing a mark might help you avoid:
- Investing money in a trademark that you could have to abandon due to the existence of another party’s prior rights to that trademark;
- A defence against a charge of bad faith or willful infringement may be supported by a logical and well-supported clearance opinion from counsel.
- The understanding gained from the search report and analysis may help attorneys prepare trademark applications that reduce the possibility of refusals or oppositions by third parties at the trademark office.
- The search findings may be helpful to you in developing marketing materials that reduce the possibility of legal challenges from owners of identical trademarks that the search turned up.
Examples of how businesses use trademark search tools
Businesses look up trademarks in the following categories using trademark search tools:
- Similar trademark searches: locate marks that are identical or confusingly similar;
- A trademark search with an opinion (also known as a “search with the advice”) includes a lawyer’s recommendation on the outcomes of an identical or similar trademark search based on their analysis of the discovered previous marks;
- Index search: locates businesses with the same or similar names as the search terms;
- In-use verification search: determines whether a third party with prior rights is appropriately using its trademark rights, which could be a reason to contest a registration; and
- Trade name search: find businesses with names identical to or similar to your intended trademark and identify trade name rights that may infringe on those rights.
Existing trademark applications, even registered trademarks, must be found during a trademark search. Consequently, using search databases is the most effective strategy. To achieve your goal, obtaining professional assistance in this area is usually preferable.
You can contact Govche India Pvt. Ltd.’s web portal, Kanakkupillai.com, as it is one of Chennai’s top trademark registration online consultants and offers services throughout Tamil Nadu, India. Kanakkupillai, a group of legal and accounting experts, aims to support and build long-term success and values for its clients.