The Blurred Lines Between Social Media Usage and Intellectual Property Rights Artist Richard Prince selects photos he finds off of Instagram, makes minor manipulations and blows them up, then displays them in galleries and sells them for profit – all…
Why Should We Do a Trademark Search?
A trademark is generally a word, phrase symbol, or design, or a combination thereof that identifies and distinguishes the source of the goods or services of one party from those of others. A company’s success in establishing a recognized trademark depends on its reputation for quality products or services. Trademarks usually can be developed and maintained through extensive and expensive advertising. Therefore, on the one hand, no trademark owners would like to see the goodwill, associated with their trademarks, used without permission by others, especially their rivals. On the other hand, a business cannot use or register a trademark or service mark if some other business already owns the mark. The purpose of searching is to try to avoid picking a mark that is “confusingly similar” to another mark.
Conducting a thorough search of a trademark before filing an application or using a mark is necessary since the results may help to identify potential problems, such as a likelihood of confusion with a prior registered trademark or a mark in pending application. Also, the search results may help to determine the “registrability” of a trademark, like whether the trademark appears as generic or descriptive wording in other registrations.
Issues to Consider Before Searching
There are some issues to consider before trademark searching: Why did you select the mark? Is it registrable subject matter? Are you already using the mark? What goods or services will the mark be used with? Does the mark have any meaning? Is the mark reminiscent of any other familiar mark? Who are the competitors for the product or service? Who are the target consumers for the good or services? Are there any designs, colors or other stylized elements?
Levels of Searches
There are three different levels of searches. The first level is a cursory search, which helps to find out exact or very similar marks by using www.USPTO.GOV or other Internet sources. The second level is a search using paid subscriber services, such as Corsearch, or Dialog, and it will help to find the phonetic equivalents and alternate spellings of marks. The third level is a comprehensive search through paid commercial services, like Corsearch or Thomson Compumark. I will focus on the simplest and cheapest type of search: a preliminary check using the Trademark Office’s database and overall Internet.
The USPTO offers a free search system known as TESS (Trademark Electronic Search System), available 24-7 through http://www.uspto.gov/trademarks at “TESS Search Trademarks Database.”
Any searches you conduct on TESS are limited to the federal trademark applications and registrations. It does not include the marks of other parties who have trademark rights but no federal applications or registration; their rights may come from the common law once use in commerce is established or with the help of a state application or registration. Therefore, it is also important to search the Internet for references to similar marks that are related to your goods and services, plus state trademark and business name databases.
Even if you use www.USPTO.gov or other database, and you don’t find anything in conflict with the mark you want to use, it doesn’t mean that the USPTO is certain to approve the mark for registration. Besides disagreeing on the likelihood of confusion, the USPTO may refuse you on other grounds, like descriptiveness. Nevertheless, trademark searching is still necessary work that needs to be done, preferably by competent professionals, to help exclude potential risks and establish rights.