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-
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-
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-
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