TRADE MARK SEARCH FILMA VARGHESE Legal Counsel – ALTACIT GLOBAL
TRADE MARK SEARCH
A search acts as a preemptive measure to ensure that the same mark or a similar mark is not already in use by others. Conducting a trademark search is part of the application process to register a trademark.
If there are other marks that:
Look the same as (or similar to) yours, for the same (or similar) goods or services, or
Sounds the same as (or similar to) yours for the same (or similar) goods or services
pick an alternate from your list or make changes or alterations to your trademark to differentiate your trademark from other known trademarks.
WHY TRADE MARK SEARCH TO BE CONDUCTED
Confirm whether your trademark is available for use and registration
Provides you with a great deal of information regarding third party uses of identical trademarks
Arm you with information regarding potential risks associated with the mark
Saves time and money of filing an application to register a trademark
Helps you assess the relative strength of your mark
IMPORTANCE OF CONDUCTING TRADE MARK SEARCHES
Minimize the chances of ever receiving a cease and desist letter
Prevents lawsuit against the clients for trademark infringement and unfair competition
Saves development time
Avoid investment losses in creating/acquiring a Trade mark
Evades negative impact on both the clients’ income and quality of life
TRADE MARK SEARCH
“ Knock-out” search - A preliminary screening check to eliminate marks.
Identity search – Finds information about one’s trademark.
Similarity search – Finds similar or potentially confusing trademarks
Contain word : finds marks with the identical ‘word(s)’ e.g. search for ‘Apple’ finds ‘Apple’, ‘blue apple’
Contain word starting with : finds marks starting with the ‘word(s)’ e.g. search for ‘Apple’ finds ‘Apple’, ‘blue apple’, ‘applera’
Contain word ending with : finds marks ending with the ‘word(s)’ e.g. search for ‘Apple’ finds ‘apple’, ‘blue apple’, ‘pineapple’
Part word : finds marks containing the ‘word(s)’ e.g. search for ‘apple’ finds ‘apple’, ‘blue apple’, ‘applera’, ‘pineapple’, ‘PineappleRepublic’
Visual and phonetic similarities : Visual and phonetic similarities are taken into account. e.g. PELICAN, PELIKAN, PELICON
Translated words : Word marks in different languages are not regarded as
similar because overall impression of the marks is likely to be different.
Sequence search – Finds trademarks which have a particular letter sequence.
Owner search – Finds all the trade marks registered by one owner.
Owner monitoring search – Monitors the trademark registration activity relevant to a particular trade mark.
Full Availability search - Includes a search of the State’s Trade Marks Register as well as structured searches of other available databases for any market .
Quick search - Search result without completing a detailed search form. Quick Search searches on all your search terms together.
So if you enter blue, star the system will look for brands that include both blue and star
Using wildcards to enhance searches
Wildcards are characters that the search engine recognizes. They add
flexibility to your searches:
Multiple character wildcard
“ *” Use an asterisk to replace a sequence of characters (e.g., to search for pharmacy and pharmaceutical, use "pharm*").
Single character wildcard
“ ?” Use a question mark to replace a single character (e.g., "organi?ation" will match different spellings: "organization" or "organisation").
Wildcards in front of characters string
Wildcards can also be used in front of the search term (e.g., "*national" will match different terms such as "national" and "international").
CONDUCTING A SEARCH
Search all registered and unregistered trademarks
Search for trademarks that sound like, look like or mean the same thing
Begin your search with the free trademark database
Search the Internet informally for unregistered trademarks
Check the availability of domain names containing your proposed trademark
Seek the services of a professional skilled in searching for conflicting trademarks
Consider consulting a trademark attorney for an opinion
DETERMINING SIMILARITY – MULTI FACTOR ANALYSIS
Comparing the marks
Goods or services
Advertising and trade channels
The defendant’s intent in choosing its mark
The presence and absence of actual confusion
REVIEWING A TRADEMARK SEARCH REPORT - FACTORS TO DETERMINE
the similarity of the marks
the relatedness of the two companies' services
the marketing channels used
the strength of plaintiff's mark
defendant's intent in selecting its mark
evidence of actual confusion
the likelihood of expansion into other markets
the degree of care likely to be exercised by the purchasers
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) (the
so-called Sleekcraft factors)
WHERE TO SEARCH?
Trade mark Office online database
Trade mark office Gazette Publications
Online commercial database
Online free database
ONLINE FREE DATABASES
ONLINE COMMERCIAL DATABASES
LIMITATIONS OF TRADE MARK OFFICE DATABASES
Geographical in nature
Updating the database
Quality and Quantity of information provided
Non-availability of online search services
THE INDIAN TRADEMARK OFFICE OFFERS TWO TYPES OF TRADE MARK SEARCHES
1. The public trade mark search
2. An official trade mark search
a. Normal search
b. Expedited search
THE PUBLIC TRADE MARK SEARCH
Any person is entitled to conduct a public search
Official fee – Rs. 400/-
Duration – 15 minutes
Search report is not authentic
This search is not recommended
INDIAN IP DATABASE
Indian Trademark Office website www.ipindia.nic.in provides online
OFFICIAL TRADE MARK SEARCH
Normal search (Rule 24(1) of the Indian Trade Mark Rules, 2002)
Any person can make an application in Form TM-54
Official fee – Rs. 500/-
Trademark Office would conduct a search
Search report would be available in approximately 30 days
Expedited search (Rule 8(2) (c) of the Indian Trade Mark Rules, 2002)
Any person can make an application in Form TM-71
Official fee – Rs. 2500/-
Trademark Office would conduct a search
Search report would be available in approximately 7 days
The mark & class in which the search is to be conducted.
USPTO – TRADE MARK SEARCH
The USPTO recommends you conduct a trademark search prior to submitting your trademark registration application.
There are two types of trademark searches, including one for words and one for designs.
Words - You can conduct your trademark search using search words via the Trademark Electronic Search System (TESS)
Designs - You will still use TESS. However, the USPTO Design Search Code Manual has to be referred to identify design codes to use with TESS.
If your trademark includes both words and designs, you will need to conduct both types of
HOW TO SEARCH THE US TRADE MARK DATABASE
Step 1: Open your browser and go to http://www.uspto.gov (The United States Patent
and Trademark Office's website)
Step 2: Select “SEARCH MARKS” by clicking on it. This will open the Trademark Electronic Search System (TESS)
Step 3: You will be given the option of selecting from several different "SEARCH LISTS" options. Start with "NEW USER FORM SEARCH" for your first search
Step 4: This will open the SEARCH PAGE. Type in the name or title or slogan you wish to search for. After you set your other search criterion, click on the button "Submit Query"
Step 5: The next page will give you a list of trademarks, if any, that matches your search term(s)
Step 6: The basic search form of the Trademark Electronic Search System, or TESS, generates results according to word marks, serial or registration numbers, owners and other commonly searched characteristics of trademarks.
Step 7: Before attempting to register or use a trademark (logo), all possibly significant elements of the mark should be searched by design code and compared for possible infringement. Each feature of a trademark is assigned a code that can be searched with the TESS. This method of searching is very time-consuming, as it involves viewing numerous pages of graphic representations contained in registered trademarks. http://tess2.uspto.gov/tmdb/dscm/index.htm
Step 8: If the search yields a mark that might pose a problem, its status can be checked via the Trademark Applications and Registrations Retrieval, or TARR, which requires either a serial number or registration number of the particular mark.
Step 9: Analyzing your search results
Go ahead and use your selection if, you do not find any conflicting marks. Begin taking steps to protect your trademark as well.
Decide whether customer confusion is likely to occur if you use your proposed trademark. If customer confusion is likely to occur because of your proposed trademark, pick an alternate from your list and start over.
Compare the class assigned by the PTO to it and the types of goods and services it represents
Selection of the trade mark is the same or very similar to a famous trademark
If you're sure customer confusion is not likely, and your proposed trademark does not strongly resemble a famous trademark, you may decide to go ahead and use the trademark
It is advisable to conduct a trademark search not only in your own country but also, as far as is possible, in potential export countries, in order to avoid problems of infringement at a later stage.