Thursday, August 07, 2008

What does a USPTO Search Look Like?

When an applicant submits a Federal trademark application, there is a timeline that's followed. Anywhere from 4-7 months after filing, the USPTO will conduct a search of their own records to look for any marks that may be conflicting to yours.

Let's look at ISHINE again, which was filed for floor finishing preparations. Here's what the USPTO Search Summary looks like:

*i$sh{"iy"}n*

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

Okay, so that's confusing looking, right? Let's define the $ symbol & the * symbol before we dive into the search strategies:

• The $ symbol definition: Matches zero or more continuous characters. The $ truncation operator can be used in any search field to represent 0, 1, or more than one character other than a blank space character.
• The * symbol definition: Matches zero or more continuous characters. The * is a more efficient truncation operator for left and/or right truncation.

To understand the difference between the two:

*wonder* results in 1279 hits whereas $wonder results in 808 hits.

Now let's break down each search strategy:

*i$sh{"iy"}n*

The front and back asterisk symbols means any instance of those letters in that order will pop up, regardless if it's at the beginning of a word (e.g. ishine), the middle of a word (e.g. silvershine), the end of a word (e.g. finishing) or as separate words (e.g. ice shine, which blocked this mark).

One important note, you can see that the USPTO limited the vowel characters between the letters H and N to just find the letters I or Y. This means that the USPTO didn't look for marks like ishone. Since shone is an inflection of shine, that mark would be relevant.

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

The concept is similar to the above. The main difference is that the USPTO added three different vowels to the end and dropped the letter I at the beginning. This results in marks such as shine, shyny, shining, etc. As you can well imagine, this resulted in a large number of hits – 2,595 to be exact. The USPTO then narrowed it by International Classification, which resulted in 926 hits.

Lastly, they narrowed it by the goods description. Interestingly enough, they only used two words to describe the goods – floor or floors. 46 hits were the result here. The limitation of the goods description is also troublesome. What about all the types of flooring that are out there? For instance, if there was a mark with a similar name who had filed as "hardwood finishing preparations" or "laminate finishing" it would not have come up during the USPTO's search.

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