How to Perform a Trademark Search and Obtain a Trademark Availability Opinion

How to Perform a Trademark Search and Obtain a Trademark Availability Opinion

MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello, everyone, and welcome to a special edition of “Trademan’s Trademark Talkback.” Where you ask the questions you want and we give you the answers you need. Thanks for all your e-mails, texts, video chats, and everything else you send in; keep ’em coming. We’ll try and take more throughout the show. With me, as always, is our Senior News Analyst, Grant Gainsworth, as well as our very special guest. You know her as an author, an educator, and a frequent contributor to this program, Professor Christina Graham-Lawson. Professor, welcome back.

CHRISTINA GRAHAM-LAWSON, PROFESSOR OF LAW:
Thanks, Mark. Happy to be back.

TRADEMAN:
Well, let’s get right to it. First up: Janet in Springdale, Arkansas e-mails, “The USPTO recommends doing a ‘search’ before filing a trademark application. What does that mean?” Professor, would you like to take this one?

GRAHAM-LAWSON:
Certainly.  The USPTO recommends doing a search of existing trademarks because the more you know before filing about what is on the USPTO’s Trademark register, the better decisions you might make.

To explain that a little further, Janet, let me give you some background.  The first thing to understand is that the federal registration of your trademark is not guaranteed.  There’s an examination process, a review process, that every mark goes through.  Procedural things have to be right.  There can’t be any substantive problems…  There are a lot of moving parts, OK?

One of those parts, those issues, is what is known as a “likelihood of confusion” between your trademark and a mark that has already been applied for or registered.  If there is a likelihood of confusion, your mark will be refused.

So, to help you avoid that situation, the USPTO recommends that you search their database of registered and applied-for marks before filing.  Knowledge is power, as the saying goes, and searching might help you decide whether filing is right for you.  It can help you make an informed choice.

TRADEMAN:
Good question, Janet.  Thanks for the e-mail.  Raj, in Fremont, California had this to say:

RAJ, CALL-IN GUEST:
Okay, so if I file for a mark and some other guy with the same mark files after me, can he, like, leapfrog me to get to registration?

TRADEMAN:
Grant, you’re the office expert.  You want to take it?

GRANT GAINSWORTH, TMIN SENIOR NEW ANALYST:
Sure.  Not exactly, Raj.  The USPTO reviews applications in the order received.  And when you file, you’re assigned a filing date.  That filing date means you are presumed to have priority over applications with a later date.  So, if an application filed after yours is likely to cause confusion with yours, that application will be blocked, or, technically, suspended, until your application either registers or goes abandoned.

Remember, though, that the priority created by a filing date is not absolute.  You might have really strong rights based on long use of your mark, for example, even if this is the first time you’ve filed for a federal registration.  So, if you’re second in line, and you have stronger rights than the applicant in front of you, you may be able to intervene with an opposition proceeding and prevent that application from registering.   So while there’s no leapfrogging, the second in line does have an opportunity to assert superior rights at the proper time in the overall registration process.

TRADEMAN:
OK, Raj.  Hope that helps.  Just got a text from a mobile phone user in Middlebury, Vermont: Whasup with Like of Confus? The prof skipt ovr it.  More info pls!

Alright, Professor.  Sounds like we have a viewer who wants additional information about what is meant by “likelihood of confusion.”

GRAHAM-LAWSON:
No problem.  Basically, “likelihood of confusion” means that consumers are likely to be confused by the use of similar marks on related goods and services, such that consumers mistakenly think that all the goods and services are coming from the same company, when they’re really not.

There are a lot of factors that go into this analysis, but let me give you a very basic example.  Let’s say you use the brand name “TEE MARQEE” for your t-shirts and there’s another company that uses “T.MARKEY” for their hats.  That’s a problem.  Because the marks are similar in sound and hats and t-shirts are often produced by the same company (meaning those goods are related), there’s a likelihood of confusion.

Remember: same or similar mark; related goods and services.  So, in this case, when consumers hear “T.MARKEY,” they’re going to assume that both the hats and the t-shirts are coming from the same company.  That’s a likelihood of confusion.

TRADEMAN:
And what makes that bad?

GRAHAM-LAWSON:
Well, think back to what a trademark does: it indicates the source of particular goods and services.  If a trademark creates confusion with another trademark, it’s not really doing its job.  And the practical effect is that consumers might buy a product expecting it’s from a company that they know and trust, when the product is really from some other company.  So, under the law, you may not register a trademark that is likely to cause confusion with other marks.

TRADEMAN:
Alright.  Thanks for the text- uh, OK, just got word from our producer that there is more information about likelihood of confusion on the USPTO.GOV website.  Let’s roll that footage, Karen.

OK.  As you can see, there’s a larger explanation of likelihood of confusion, along with some examples.  Great.  That should help.  Check it out, folks.

OK.  We have a video chat from Willa.  Willa, go ahead.

WILLA, CALL-IN GUEST:
So, I sent in my application and got back this letter from a USPTO examining attorney and she said she did her own search of trademark records.  So, I guess my question is, if the Office does its own search, why do I need to search?  Oh, and was I supposed to search?  ‘Cause I didn’t.

TRADEMAN:
I think you touched on this a little earlier, Christina.

GRAHAM-LAWSON:
Here’s the deal, Willa.  Yes, it’s true that examining attorneys conduct their own searches of the USPTO database.  They’re required to, under the law.  But, they conduct this search after you’ve filed.  And if their search reveals that your mark is likely to cause confusion with a live trademark in the system, you get a refusal.  And the Office can’t give you a refund.

WILLA:
Couldn’t I just change my mark?

GRAHAM-LAWSON:
Well, the ability to change, or “amend,” your mark after filing is very rare and only applies in select circumstances.  And any amendment that would overcome a likelihood of confusion refusal probably isn’t covered by those limited circumstances.

But that leads me to my point: if the examining attorney can find the conflicting mark in the database, it’s there for you to find too.  So, if your search uncovers a mark that will block yours and you decide to register a different one instead, you’ve just saved yourself hundreds of dollars, months of time, and plenty of frustration.

WILLA:
Can’t the USPTO do the search before I file?

GRAHAM-LAWSON:
Unfortunately, no.  The USPTO will not conduct preliminary trademark searches and it cannot help you assess whether to file.

TRADEMAN:
OK…

GAINSWORTH:
Mark, if I could tack on here.  I just want to remind viewers that not every application receives a likelihood of confusion refusal.  Based on our conversation here, it might sound like it, but your search might come up clean, with no likelihood of confusion issues.  Same with the examining attorney’s search.  Now, of course, your mark could be refused for other reasons, but just remember that the USPTO does not always issue a likelihood of confusion refusal.

TRADEMAN:
Good point, Grant- though let me get this straight, based on what you two have talked about over the last few minutes.  Focusing on the issue of likelihood of confusion alone, it sounds like there are several times it can rear its head during the application process: Before you file, when you do your own search; After you file, if the examining attorney finds something you missed; and then, essentially, whenever an earlier user of the mark asserts rights in that mark, even if that person, or company, has not yet registered the mark.  Is that correct?

GRAHAM-LAWSON:
Correct.

TRADEMAN:
Then what’s the point of searching?  It doesn’t sound like it’s worth it.

GRAHAM-LAWSON:
It is, though, yes.  Because think about it- let me give you an example: if the USPTO database already contains an application or registration for the same mark for goods and services related to yours, don’t you want to know before you pay the filing fee?  You want to minimize the odds that you’ll get a refusal.  Or that someone will pop out of the woodwork and challenge your use of the trademark.

TRADEMAN:
So, how do you do that?

GRAHAM-LAWSON:
You have options.  There are attorneys out there who specialize in trademarks and they routinely conduct the types of searches we’re talking about.  They’re known as “clearance searches.”  The attorneys look for common law trademarks and state and federal trademark applications and registrations that might conflict with your mark.  And, if you want, the attorney can help you with the rest of the application process.

Of course, you always have the option to do it on your own.  There are no set rules on the best way to conduct a thorough search, but it at least includes going to USPTO.GOV and using the Trademark Electronic Search System (also known as TESS) to look for federal registrations and applications that might conflict with your mark.

While you’re online, use your favorite search engine and see if the results show anyone using a mark similar to yours for related goods and services.

And I’d also check out state-level Secretary of State websites and see what’s in the state trademark databases.

A thorough search will include other resources, but these are some good starting off points for finding what’s out there, covering federal, state, and common law trademarks.

TRADEMAN:
Sounds like a lot of work.

GRAHAM-LAWSON:
It is, but selecting and protecting your trademark is part of building your business.  It’s an investment in the goodwill and reputation of your company, so you want to take the time to do it right.

TRADEMAN:
Sound advice from Professor Graham-Lawson.  Looks like we can squeeze in one more e-mail: Estevan in San Juan says, “I’m planning to do a search on my own.  Can we have more information about TESS?”  Grant?

GAINSWORTH:
Well, as Christina said, TESS is available through the USPTO.GOV website.  As you can see, you can use the system to search for word marks, design marks, and combinations of words and designs.

Before you begin, though, take a look at the “TESS TIPS” and be sure you read and understand them.  The tips give you an explanation of what the USPTO database includes, how to construct a complete search, and how to interpret the search results.

Also be sure to consult the Help page.  In addition to providing tips for more efficient searching, the Help section provides lots of critical information about using TESS.  Including a Glossary, Frequently Asked Questions, and sample searches.

TRADEMAN:
There you go, Estevan; hope that helps you.  Any final thoughts, Grant?

GAINSWORTH:
Yes, I think Christina mentioned this already, but I want our viewers to remember that a TESS search only includes federal trademark registrations and applications.  To do a complete clearance search, you need to check other resources for state registrations and common law trademarks.

TRADEMAN:
Christina?

GRAHAM-LAWSON:
Searching can be a complex process, so you might want to hire an experienced trademark attorney to help you along.  Your attorney will be able to help you make the determination of whether or not a likelihood of confusion exists with your mark.  And remember, the USPTO cannot aid in the selection of an attorney, so be sure to check online or with your local Bar Association for an experienced one.

TRADEMAN:
OK; great.  Thanks to you both.  That’s all the time we have for today.  We’ll try to get to more of your calls and e-mails and chats next time.  In the meantime, feel free to replay this broadcast as many time as you need and print out the available transcript.  And keep an eye out for more of these broadcasts throughout the website.

With special thanks to Grant Gainsworth and Professor Christina Graham-Lawson, I’m Mark Trademark, Trademark Information Network.

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