TRADEMARK SEARCHING. What’s meant by “trademark searching?” A business can’t use or register...
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Transcript of TRADEMARK SEARCHING. What’s meant by “trademark searching?” A business can’t use or register...
TRADEMARK TRADEMARK SEARCHINGSEARCHING
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.
TRADEMARK SEARCHINGTRADEMARK 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).
TRADEMARK SEARCHINGTRADEMARK 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.”
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK SEARCHING
The USPTO’s On-line Search System: Known as TESS, the Trademark Electronic
Search System Available at the USPTO’s web site.,
www.uspto.gov
TRADEMARK SEARCHINGTRADEMARK 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
TRADEMARK SEARCHINGTRADEMARK SEARCHING
Search example: Mark: SPARROW Services: Cosmetics research, in international
Class 42. TESS
TRADEMARK SEARCHINGTRADEMARK 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
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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
TRADEMARK SEARCHINGTRADEMARK SEARCHING
Design Search example:
Services: “Restaurant services,”international class 43.
USPTO Design Search Code Manual TESS
TRADEMARK SEARCHINGTRADEMARK SEARCHING
Search example:
Goods:, Sun block, in international class 3 Design Search Code ManualTESS
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK 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.
TRADEMARK SEARCHINGTRADEMARK SEARCHING
AVOIDING PITFALLS AVOIDING PITFALLS IN PROSECUTIONIN PROSECUTION
Prosecution PitfallsProsecution PitfallsLikelihood of ConfusionLikelihood 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?
Likelihood of ConfusionLikelihood of Confusion2 Main Factors2 Main Factors
1. Are the marks the same or similar in sound, appearance or meaning?
2. 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”
Prosecution PitfallsProsecution PitfallsLikelihood of ConfusionLikelihood 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”
Prosecution Pitfalls Prosecution Pitfalls Mark is DescriptiveMark 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”
Prosecution PitfallsProsecution PitfallsMark is DescriptiveMark is Descriptive
Note: Marks that only suggest something about a product are not descriptiveExamples
SKINVISIBLE for “transparent medical tape”HERCULES for “barbells”
Prosecution PitfallsProsecution PitfallsDescriptive or Suggestive?Descriptive or Suggestive?
COPPERTONE for “suntan oil”
QUIK-PRINT for “printing services”UNDERNEATH IT ALL for “undergarments”BUG MIST for “insecticide” APPLE for “computers”
Prosecution Pitfalls Prosecution Pitfalls SurnameSurname
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
Prosecution PitfallsProsecution PitfallsSurnameSurname
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)
Prosecution PitfallsProsecution PitfallsOptionsOptions
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
Prosecution PitfallsProsecution PitfallsDrawingDrawing
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 applicationImportant! After filing, only “non-material”, i.e., minor changes, may be made
Prosecution PitfallsProsecution PitfallsDrawingDrawing
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
Prosecution PitfallsProsecution PitfallsDrawing of MarkDrawing of Mark
Drawing includes more than one markExample: “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.
Prosecution PitfallsProsecution PitfallsIdentification of Goods/ServicesIdentification 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”
Prosecution PitfallsProsecution PitfallsIdentification of Goods/ServicesIdentification 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)
Prosecution PitfallsProsecution PitfallsIdentification of Goods/ServicesIdentification of Goods/Services
If possible, use Acceptable Goods and Services
Manual available online at http://tess2.uspto.gov/netahtml/tidm.html
call the Examining attorney to try to resolve ID issues over the phone
Prosecution PitfallsProsecution PitfallsSpecimensSpecimens
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
Prosecution PitfallsProsecution PitfallsTypes of Specimens for GoodsTypes 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, menusNot acceptable: Advertisements, promotional matter, business cards, invoices
Prosecution PitfallsProsecution PitfallsTypes of Specimens for ServicesTypes 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
Prosecution PitfallsProsecution PitfallsSpecimensSpecimens
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
Prosecution PitfallsProsecution PitfallsSpecimensSpecimens
If you can’t provide acceptable specimens, consider amending the application to intent-to-useThis may give you additional time to show acceptable use
Prosecution PitfallsProsecution PitfallsOwner of MarkOwner 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 void
Example: The actual owner of the mark is XYZ Company, but its president, James Smith, is listed as the owner
Trademark SymbolsTrademark Symbols
Office does not control the use of these symbols:
TM or SMOnly federally registered marks may appear with the registration symbol:
®
Prosecution PitfallsProsecution PitfallsResponding to Office ActionsResponding to Office Actions
When responding to Office actions: Respond fully to all issues Avoid waiting until the last minute File a timely response
Prosecution PitfallsProsecution PitfallsDue DiligenceDue Diligence
Exercise due diligence - check status of application at http://tarr.uspto.gov
Check status every six months: 1. after filing and until a registration certificate is
issued; and2. after filing an affidavit of use or renewal until
notice is received that the filings were accepted
You get an Office actionYou get an Office actionCan you still use your mark?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
CONTACT INFORMATIONCONTACT INFORMATION
MERYL HERSHKOWITZManaging Attorney
US PATENT & TRADEMARK OFFICELAW OFFICE 116
(571) 272-9173Email: [email protected]
TRICIA MCDERMOTT THOMPKINSSenior Supervisory Attorney
US PATENT & TRADEMARK OFFICELAW OFFICE 101
(571) 272-9463Email: [email protected]