WHY a Formal Trademark Search? Has someone else already registered this trademark? Will you need a copy of a search report in an opposition or cancellation proceeding?


(Also see the USPTO document Protecting Your Trademark aka Basic Facts for more information)


How and Why to Search for FREE using the USPTO TESS trademark database

Why  trademark search for whether or not a trademark is trademarkable? An application to the Principal Register has two big obstacles to registration.

1. Does it meet all of conditions for registerability  including but not limited to passing a likelihood of confusion trademark search and will it be preliminarily approved for registration by the Examining Trademark Attorney?

2. Will the application be opposed by someone looking at different facts than the Examining Attorney? An examining attorney looks at LIVE prior pending applications and registrations for a likelihood of confusion. A potential opposer might not have a registration  or application or may attempt to enforce its rights beyond what the examining attorney enforces.  Potential opposers can  sometimes be identified using other USPTO (non TESS) information.


USPTO TESS [Trademark] Search Principles

Searching Prior Pending Applications and Registrations

(From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#FreqAske)

Following are [10] likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.

1. Conduct a Thorough Search.

    2. Search All Forms of all the Distinctive Elements of the Mark.

    3. Search Each Distinctive Element Alone.

    4. Search Acronyms AND What They Stand For.

    5. Search All the Legal Word Equivalents of Terms.

    6. Search Component Parts of Individual Terms When Necessary.

    7. Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.

    8. Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.

    9. Search all Phonetic Equivalents. [TESS does not search phonetically except for the pseudo mark function]

    10. Search all English [and Foreign] Equivalents.


[Keeping copies of search results pages can provide evidence for opposition or cancellation proceedings.]


OTHER DETERMINANTS OF TRADEMARKABILITY


Trademarks that are inherently distinctive (Arbitrary or Fanciful or Suggestive) or marks that have acquired distinctiveness are more trademarkable than generic terms or descriptive terms.

Generic words are not trademarkable unless they are disclaimed in the presence of other distinctive matter or are in a compound mark that is not generic.


Factors considered in determining whether a secondary meaning [or acquired distinctiveness] has been achieved include: (1) whether actual purchase[r]s of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark and, (4) whether use of the claimed trademark has been exclusive.


According to the U.S. Senate Resolution  580 passed on July 24, 2018  “consumers in the United States encounter an average of 1,500 trademarks each day.” The Resolution aims to educate the public regarding the “value of brand names and trademarks in an increasingly competitive global marketplace serves the public interest of helping to safeguard consumers against deception and confusion in the marketplace.”

APPLY FOR YOUR TRADEMARK TODAY!



A Trademark Search and Opinion Can Analyze Whether Your Trademark Is Strong and Available


1. Verify/Check Inherent Strength  Does each trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?


Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.


2. Verify/Check Right to Use  Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?


Section 2(d) refusals are very common refusals.


3. Verify/check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)


4. Verify/check Specimen and Use in Commerce  Is the trademark used as a trademark or service mark in the specimen? Is the trademark in “use in commerce” under the applicable statute?


Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.


5. Verify/check Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?


ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.


6. Verify which application form is the best for your trademark application. TEAS Plus? Or TEAS Standard?


Need help? Email  W@TMK.law or call 1-651-500-7590.



Go Beyond Just A Business Name To A Strong Brand

Do you know the answers to these questions? Getting help might be a good idea!


These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. [The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register.]


All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better. Call or email Not Just Patents for help!


TMk®, Not Just Patents® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.



WSP.mn

Why A Formal Trademark Search?


TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS

TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Oppose or Cancel? Examples of Disclaimers  Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Preparing to file a trademark application

Trademark Search Method TMA Petition    

How to Trademark Search Trademark opposed?

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen?  How many days to register?

Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

Oppositions-The Underdog  TTAB Discovery Conference Checklist

How To Answer A Trademark Cease and Desist Letter

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Hashtag Searching   Amend to Supplemental Register?


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 309 Grounds Opposition/Canc.  

Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  Trademark Timeline

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

Trademark Opposition Timeline  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

   Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  Trademark Registration Cancellation

What is the Difference between Principal & Supplemental Register?   How many days until my trademark registers?

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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(Calls are screened for ‘trademark’ and other applicable reasons for the call)