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SCREENING YOUR POSSIBLE TRADEMARKS

Once you have decided on a word you would like to use as a trademark, you can screen it by searching for trademarks and trademark applications that are spelled similarily or that look or sound similar. If you are also using a logo, don't worry about it right now, just search for the word. (1) Use the USPTO search system (TESS), then (2) Search the internet. You might find a lot of hits to similar words/marks, and maybe some to the same word.

(1) Search with USPTO's trademark database (Trademark Electronic Search System, or TESS) to see if any trademark has already been registered or applied for: https://www.uspto.gov/trademarks/search

Simply enter the word or words that make up your trademark. This is how to do it.

Go to https://www.uspto.gov/trademarks/search and click on "Search our trademark database (TESS)"

Click on the first option "Basic Word Mark Search (New User)", and write your mark in the search filed.

Now enter your mark in the Search Term field. Have a look at this example where we will search the made-up word "SUPERMARK".

 

You will then see the results of your search. Here we entered the word "SUPERMARK". Here are the results we found. Have a look at these results - we got 4 hits for the identical word (SUPERMARK), but they are all "DEAD". That means they are no longer registered, so we are clear, and we can file this mark and try to register it ourseves. 

Here's another example. If we search for "TRADEMARKY" we get this. It's a direct hit, with just one record showing that "TRADEMARKY" is LIVE and is registered with the USPTO, so we cannot use it.  

Other results you might see are "No TESS records were found to match the criteria of your query." That's very good, as it tells you that the mark you are looking for is not yet registered.  BUT remember that this is not a guarantee of registrability. It may be that the mark cannot be registered for various reasons. So don't assume this is a green light.  In fact, at the top of the search page on TESS you will see a clear warning that reads: "WARNING: AFTER SEARCHING THE USPTO DATABASE, EVEN IF YOU THINK THE RESULTS ARE "O.K.," DO NOT ASSUME THAT YOUR MARK CAN BE REGISTERED AT THE USPTO. AFTER YOU FILE AN APPLICATION, THE USPTO MUST DO ITS OWN SEARCH AND OTHER REVIEW, AND MIGHT REFUSE TO REGISTER YOUR MARK."

Now try doing a search yourself. Make up a trademark word and search for it. 

Once you have found your search results, you will need to carefully look at them to decide is there is anything that threatens your proposed mark, and if there is, how serious a threat it is.  We recommend that if you find even a moderate threat, then you should seriously think about coming up with another potential trademark that has no red flags. It's a lot easier if you start with a mark that is totally clear.

Remember that you should pick a mark that is fanciful, arbitrary or suggestiven and not one that is descriptive or generic (see 'TRADEMARKS' tab). But even if you pick a great trademark that is FANCIFUL or ARBITRARY, it can still be rejected is it is likely to be confused with somebody else’s mark that is in use and was being used before your registration. This is called LIKELIHOOD OF CONFUSION (LOC) and is the most common reason for a mark being rejected, so you have to take it seriously. Once you file your trademark, the USPTO trademark examiner conducts a search for conflicting marks and this includes looking for LOC issues. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Important factors are (i) Similarity of the mark – the way it looks or sounds; (ii) Similarity of goods/services – are they similar, related or the same? (iii) Similarity of the parties' trade channels; (iv) The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision), and (v) Evidence of actual confusion.  So when you look at your search results, ask yourself - "Is a typical buyer likely to be confused?".  If the answer is "Yes", then pick another mark.  Here is a good example of Likelihood of Confusion.

OTHER FACTORS TO CONSIDER

Consider how well the public will remember, pronounce, and spell your trademark. Consider the availability of the DOMAIN NAME and similar domain names. If you plan to market your goods or services outside the United States under the same trademark, consider whether your trademark has a different meaning when translated into a foreign language, particularly if the translated word could be considered offensive.

Once you have screened your trademark, we can file a trademark application to register it. If you have picked a good mark, the process should be trouble-free.  Immediately after you file the application, you can and should use the "TM" symbol.  After (and only after) it is registered or the principle or supplimentary trademark register, you should use the "R" symbol. 

 

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