If You Think A Trademark Search Is Easy, You're Not Doing It Right!
Search The Trademark Office Site
Trademark searching is both an acquired skill and an art. Try it yourself, by all means, but recognize there are several hundred professional trademark searchers out there hunting down names for a good living. I know. I was one of them for all of four weeks when I was in college. It was the first and only job I've ever been flat-out fired from, my attorney-boss saying, "I'm sorry, but apparently you have no talent for this job."
Having admitted that, you may think I'm the wrong person to advise you, but many years later, as a poor inventor, I had no choice but to learn to search and file applications myself and I managed to eke out five (so-far) uncontested trademark registrations.
If you have the time and/or you are a poor inventor, then go to the Trademark Office and be ready for some confusion of your own as you muck around. There's a column on the left that says "start here." Actually, if you follow that link, each one of the information sources listed are very helpful as background to filing an application. For the preliminary printed word search you are doing now, The International Schedule of Classes of Goods and Services will help you identify the international class (IC) that fits your product. There are currently 34 classes for goods and 11 classes for services. If it's a kitchen item, the international class (IC) designations like IC 021 (Household or kitchen utensils and containers); if it's an electric soldering device IC 009 (Electric, etc.). My musical instrument, Chinatone, belongs in IC 015, the classification for Musical Instruments!
Then, to make sure you are correct, search the Trademark Acceptable Identification of Goods and Services. Go to "Browse Entire Content" and on that page select "Goods." Scan through the Goods pages to try to find how your invention is described and then how it is categorized by IC.
Now, ready for the search? Go to the main Trademark Office page and select "search." You will reach the Trademark Electronic Search Service (TESS). Choose the "new user form search" and that will link you to a form with preset options. For now, leave the settings as they are, and type your brand name in the "Search Term" box, and you will learn if your brand, just as you would have it, is in use. (Just as I thought, Chinatone is registered, but as a service mark, so quite possibly I can still use it.)
The easy part of your search is over. Now comes the art of taking your name apart, (e.g., Chinatone would be "china" and "tone" ) and then looking it up in various combinations, phonetic spellings, sound alikes, etc just as we did for the web search. Don't forget to use full quotes (" ") around each of your terms and separate the terms with the word and or or.
If you find a mark that concerns you, open the file and check the international class. As in our web search, if it's a similar product and the brand name is close to your selected brand, you can drop this particular brand from your list or seek the advice of a trademark attorney. If it's not in your IC you should still be cautious about using it if the product or company is very well known.
If you are planning to market your product internationally, you can search most trademark databases online by country. However, the World International Property Organization (WIPO) has a database of trademarks from more than 80 member countries - for a more efficient search.
I've given you some basic tools to conduct a pretty extensive search. But if you ask me straight out "Should I use a trademark search service?" my answer is "YES!" Services offer more extensive searches through state trademarks, common law trademarks, as well as expert USPTO and international searches. It may cost you $500 or more to use the services of a trained trademark searcher, but put that cost into perspective: Do you want production and shipping halted on your new product by a court injunction alledging violation of trademark?
Thompson & Thompson has a very fine reputation for thorough searches. There are other search services that advertise on the Web, but I don't have any information about them. Ask your patent attorney for a recommendation or have the search executed through your patent attorney's office.
Believe it or not, filing a trademark application is a breeze compared to everything you've been through in this entire invention process. And we'll take a look at that in next week's column.
To access other articles in this series, go to My Blog. The series begins with the last article posted (now at the bottom of page 2).