Monday, August 18, 2008

How to do an Effective Preliminary Trademark Search

Before filing for a trademark, comprehensive research is needed to ensure that the name you want to use is legally available. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

However, before having comprehensive research conducted, it is advised that folks take advantage of as many free resources as possible. You can find a listing of sources to check out here. Now let's discuss how to conduct the most efficient preliminary search possible.

Let's say you have a clothing line geared towards women and you want to call it Heroine Next Door. Click on New User Form Search (we'll delve into the other 2 options next month).

Image and video hosting by TinyPic

Type in the name Heroine Next Door into the Search Term box. Be sure that Plural and Singular & Live and Dead are checked. Also ensure that you're searching for Combined Word Mark. Click Submit Query.

Image and video hosting by TinyPic

This will result in 0 hits but do not be fooled into thinking that your preliminary work is done. Once you've done the exact name search, it's time to expand your mind about your name. What are all of the possible variations to the name that could be seen as confusing? Here's a partial list:

HeroineNextDoor
Next Door Heroine
NextDoor Heroine
NextDoorHeroine
Heroine Neighbor
Hero Next Door
etc., etc.

And there we go – Hero Next Door, Serial Number 78776159 is a pending mark for, in part, a shirt line. While it's not the exact same name, it is strongly similar and likely similar enough that the average consumer would correlate the two. Now you know it's best to leave your heroine next door.

Let's just assume you weren't blocked at this stage. Now is the time to get into variations of spelling and synonyms. Here's another partial list:

Heroin Next Door
Heroyne NextDoor
Next Door Goddess
etc., etc.

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.