Planning For The Trademark Search
Whether seeking to register a federal or state trademark, planning for the trademark search is a fundamental first step for any business owner or entrepreneur intending to launch a new service or product in the marketplace. We cannot emphasize strongly enough the importance of planning for a trademark search prior to filing a trademark application with the United States Patent & Trademark Office (USPTO). Why is it important to plan for a trademark search?
Search for Conflicting Trademarks
First, because there are millions of trademark records existing in the state and federal databases, a tailored search strategy must be implemented to identify pending and registered trademarks that may be a barrier to registration. This means that the business must accurately describe the goods and services, both present and future, that will be offered in the marketplace. The tailored search strategy should be broad enough to find all the trademarks that are likely to pose conflicts, but narrow enough to limit the trademark search results to a number that can reasonably be evaluated. For example, if a business will sell only clothing in its early stages but anticipates expanding its product lines to jewelry and handbags in the future, it will be important to not only clear the trademark in class 25 for clothing but also clear the trademark in class 14 for jewelry and class 18 for handbags. If the business fails to consider expansion of its goods and services, when it comes time to launch those products or services, the business may realize it is in a disastrous situation when an identical or similar mark is pending or registered in those other classes.
Search The Relevant Trademark Classification
Second, a tailored search strategy must also identify the appropriate trademark class and coordinated classes. The USPTO divides trademarks into 45 different categories. 34 of these categories identify products and 11 categories identify services. These categories are called “international classifications” (or simply trademark classes) and are used by the USPTO to differentiate and keep track of the millions of trademark records existing in the databases. The trademark class system is also used to determine whether certain goods and services are related and whether such goods and services travel in the same channels of trade. If a trademark applicant seeks to register a trademark in the wrong class, or improperly identifies the goods and/or services to be provided, the application may be refused and all USPTO fees are generally nonrefundable. Our trademark attorneys see misclassification issues frequently and it is a hard pill to swallow for many applicants when they lose all their money paid to the USPTO during the application process.
Identify Any Potential Trademark Registration Issues
Third, if the business and its attorneys devise a well tailored search strategy, the search results will provide information that can offer the business critical information about its competitors and also shed light on registration issues that prior applicants may have had to address. For example, if a business located in Hawaii seeks to register the trademark “North Shore Apparel”, the search results may show that a prior applicant seeking registration for the same or similar mark was refused due to the trademark being geographically descriptive. Flushing out potential issues by developing a thoughtful plan for the trademark search will allow the business to avoid costly, time consuming mistakes.
Accurately Describing The Goods and/or Services
One of the most vital parts of planning for the trademark search is accurately describing the particular goods and/or services on or in connection with which the trademark is used or is intended to be used. The description of goods and/or services should be brief, clear and concise. The description should also identify the goods and/or services by their common, ordinary name so that the average consumer would recognize what they are. In other words, when describing the goods and/or services to be protected, applicants should avoid technical language.
The description of goods and/or services is important since a registration is prima facie evidence that the business owner is actually using the registered trademark on each and every good and/or service specified in the trademark registration. The description must be accurate and cannot be too vague. For example, the USPTO rejected the description of “a full line of clothing” as too broad where applicant had only used the trademark on shirts. If the description of goods and/or services is not accurate and the business owner’s application is opposed by a third party, the application could be refused or cancelled.
The USPTO maintains a listing of acceptable descriptions of good and services compiled by the Administrator for Trademark Identifications, Classification and Practice in the Office of the Commissioner of Trademarks. The Acceptable Identification of Goods and Services Manual contains identifications of goods and services and their classifications that are acceptable to the USPTO without further inquiry by a USPTO examining attorney (provided the identification and classification is supported by the specimens of record). The Acceptable Identification of Goods and Services Manual is updated periodically as descriptions of goods and services evolve and as new products and services are integrated into the marketplaces. The goods and services listings are not exhaustive, but are intended to serve as a guide to USPTO attorneys in examining trademark applications and to the public in preparing trademark applications.
Identifying the Appropriate Trademark Classification
The United States Patent & Trademark Office (USPTO) uses what is called the Nice Classification of Goods and Services. The Nice Classification is the standard used by the majority of countries around the world that register trademarks. Basically, the USPTO divides trademarks into 45 different categories. 34 of these categories identify products and 11 categories identify services. These categories are called “international classifications” (or simply “classes”) and are used by the USPTO to differentiate and keep track of the hundreds of thousands of trademarks that are registered in its databases every year. The trademark class system is also used to determine whether certain goods and services are related and whether such goods and services travel in the same channels of trade.
A trademark applicant applying for a federal trademark must: (1) select the appropriate trademark classification in connection with the goods and/or services to be provided; and (2) appropriately identify and describe the goods and/or services in connection with the appropriate trademark classification. If a trademark applicant seeks to register a trademark in the wrong class, or improperly identifies the goods and/or services to be provided, the application may be refused and all USPTO fees are generally nonrefundable. Our trademark attorneys see misclassification issues frequently and it is a hard pill to swallow for many applicants when they lose all their money paid to the USPTO during the application process – which, if applying in multiple classes, can be significant. It is important to note that holding multiple trademark registrations covering multiple trademark classes is not uncommon for companies that provide a broad spectrum of good and services.
The USPTO has identified certain “coordinated classes” or related classes for certain goods and services. For example, class 25 (clothing) has several coordinated or related classes, including class 14 (jewelry), class 18 (leather goods), and class 35 (advertising and business services). This is because many companies that offer clothing also offer jewelry from class 14, leather handbags from class 18, and retail store services from class 35. So, if you sell clothing, a consumer could reasonably expect that you also sell goods from classes 14 or 18, or offer services from class 35. Trademark classes are one of the most important elements when planning for a trademark search.
Conducting a Preliminary Trademark Search or Knock-Out Search
Once a client engages our law firm to conduct a trademark search, our attorneys will first perform a preliminary search (aka a knock-out search) of the USPTO database. The objective of a preliminary search is to identify identical trademarks in the selected trademark class that would immediately pose a barrier to registration or place the business owner at risk of being sued for trademark infringement. It is not uncommon that the preliminary search will identify conflicting trademarks registered by third parties – especially when the business owner chooses a trademark using common words or phrases and the trademark class selected is competitive (e.g. clothing).
When conducting a preliminary trademark search our attorneys will primarily focus on the literal and phonetic elements of the trademark, how an average consumer would define or translate the trademark, and the overall commercial impression of the trademark. In addition, our attorneys will analyze the goods and/or services covered by any trademarks that may be conflicting. For example, if a client proposes a trademark to be used for “socks” in class 25 and an identical trademark is pending or registered in class 25 covering “shoes”, the goods are closely related so that a consumer who encounters the trademarks could mistakenly think that the two companies are associated or affiliated with one another. In other words, if it is common for the same company to sell both “socks” and “shoes”, then it is likely consumers would be confused if both identical marks existed in the marketplace.
If the preliminary search does not identify any immediate barriers to registration or use, then our attorneys will proceed with conducting a comprehensive trademark of all 50 state (and territories) trademark databases, the USPTO database and possibly the internet. It should be noted that a trademark search will never be 100% effective in predicting success in registration or eliminating all risk of trademark infringement. Rather, the trademark search is performed to identify any potential barriers to registration and reduce the potential risk for trademark infringement. Even the most comprehensive trademark search may not identify every issue that may arise during the registration process or uncover every potentially conflicting trademark. However, by conducting a trademark clearance search, the business owner can significantly reduce many of the risks that may arise during the registration process.