The following is an edited transcript of my video Key Trademark Search Terms
I recently saw an ad for a new children’s play activity center that opened just down the street from our office, and the ad had one of those giant ball pits that kids are either jumping into or going off a slide to land in. This set off an alert in my brain, because I had been looking for the perfect metaphor to describe the different types of trademark searches and the language around them. I must have been thinking about this problem earlier that day, and it just rang to me as, “Ah, this is the metaphor.”
A ball pit is the metaphor for searching the universe of potential trademark conflicts. If you were looking for something in that ball pit, say there was a hidden treasure, you could skim the top and you would be doing a type of search, but you would be missing a lot of information.
Or, you could search really thoroughly just from standing on one side of the ball pit. But you’re going to miss part of the depth of the ball pit on the other side. To really search for the needle in the haystack, you’ve got to go through the whole thing, across every layer, as deep and wide as it goes. And that is what, in my mind, a comprehensive trademark search is. Different people use the term slightly differently. So it is important to make sure that if you’re ordering a search or talking about a search with someone, that you’re on the same page as to what it means in terms of what they cover. I think that you can talk about the depth of the search and the breadth of the search, as illustrated in this graphic.
The depth of the search is whether it’s just covering the USPTO or whether it’s covering all the layers, which would be the USPTO, plus common law, state databases, domain names, and the internet. All of those layers together is the full depth of the ball pit and that’s the comprehensive search. If you’re only searching the USPTO, which has a lot of value in a lot of circumstances, you’re only searching one layer of the ball pit.
The breadth of the search is how wide of a net you’re casting within those layers. If you’re doing just a knockout or basic search, you’re really just looking in one particular area, you’re saying, “Is there something that’s almost exactly what I’m looking for? I think it’s right here.” Or, are you doing the more comprehensive search that’s covering all different types of variations of the spelling, the sound, the spacing of the name that you’re considering, or that you’re searching? Therefore, to be fully comprehensive, to search that whole ball pit, layer by layer, corner to corner–a comprehensive search–you’ve got to be searching all the layers and you’ve got to be searching those variations. Otherwise, you are doing a more limited search, and again, there’s nothing wrong with doing a more limited search as long as you know that’s what you’re doing and that there’s a reason behind it.