Guide to Trademark Searching
Explains the trademark search process and preliminary steps.
Preliminary Considerations
1. Decide whether you need a:
Trademark - a single word, phrase, symbol or design or combination thereof used to uniquely identify and distinguish the source of a product (Example: the Nike swoosh).
Service mark - performs the same function as a trademark for a service instead of a product (Example: CompUSA, the parent company of H&R Block)
Copyright - protects an original artistic or literary work (Example: The Da Vinci Code lawsuit).
Design Patent - protects a new or original appearance/design of a manufactured item (Example: a coffee pot shaped like a flower)
Trade Secret - protects a formula/recipe/process, etc. that gives a business a competitive edge (Example: Bush's Baked Beans or Coca Cola syrup).
2. If the trademark category fits, decide:
- If you will register at all.
- If you will register only in one or a few states where you primarily do business.
- If you will register nationally.
- If you will register internationally.
3. Keep in mind the reasons new trademarks are commonly refused:
- similarities in sound, appearance, and meaning*
- similarities in use and marketing
- merely descriptive or misdescriptive. Avoid terms either commonly used to describe the qualities/characteristics of the product or service or those that would contradict those qualities/characteristics
- primarily geographically descriptive or misdescriptive
- a surname (last name)
*Note: Words that sound the same as an existing trademark although spelled differently will be rejected, especially if they apply to a similar product with a similar use.
Seven Steps in a Trademark Search
(from the PTDLP - Patent Trademark
Depository Library Program)
- Describe your product(s) or service(s).
- Use the Acceptable Identification of Goods & Services Manual to identify specific terms that describe your product(s) or service(s).
- Determine the international class.
- Determine related goods and services and their classes.
- Develop a basic search strategy.
- Broaden your search strategy.
- Conduct the search.
- Search logos and designs (Extra step for graphic designs).
