The following is an edited transcript of my video All About Trademark Searches.
Searching for trademark conflicts is one of the most important things about the practice and protection of trademarks and brands. I often speak and wring about conducting a search before you file, but here I want to go a little bit more in depth to talk about some of what these different types of searches and different terms—terminology that we use when talking about searches. I was inspired by this because I saw that this summer, a friend of mine, trademark lawyer Ed Timberlake, actually helped taught a class about trademark searching called Searchcademy that I got a lot of great feedback on, which featured techniques for searching TESS, the USPTO search system,.
There is so much to cover when it comes to searching, and we’re not going to get into the nitty gritty on here, but I want to cover the different types of searches and why they’re so important. A “common law search” means let’s search and find out if anybody is already using this phrase or something similar. The reason that’s valuable to know is that even if nobody’s registered the phrase, the fact that they might be using it in a way that competes with you could give them rights that would supersede yours. So a common law search is valuable for that reason. Now, in any search, it’s also valuable to state that you have to search for more than just exact duplicates, exact conflicts, because differences in spelling, in sound, may not be significant enough to avoid a conflict.
So sometimes people tell me they searched for two words and they didn’t search for the words together with no space, or they didn’t search for the word with an S or an ING on the end, if that might be applicable. And all of those variations can be very important when you’re doing a clearance search. So that was common law searches that we started by talking about.
“TESS search” means a search of the USPTO database, their records that contain all of the existing registrations, all of the pending applications. It even includes most of the dead records, meaning applications that never became registered or registrations that became canceled. And searching TESS is very valuable, not only before starting a new application, but also in clearing a new name.
Those are the two main types of searches: a common law search and a TESS search.
And when I refer to a “clearance search,” I’m generally meaning that we’re searching both TESS and common law records and probably domain names on the internet, of course, as part of common law records – all of those places are very important to search. Another important thing to think about when beginning a search is how wide of a net you’re going to cast. Are the products or services very narrow and very focused and easily defined? Or is this a product or service that cuts across several industries and therefore can be much harder to define in the scope, and much harder to search as a result because you’re searching a broader area of other brands and businesses and trademarks?
When deciding about casing a wide net or a narrow net, i’s very nuanced and it’s very hard to teach or to translate that skill. Really, doing hundreds or thousands of searches is the only way that I’m aware of to hone and become an expert in those skills. Another important aspect of the search is reviewing all of that data. So it’s one thing to do the search queries to build them, how big of a net are we casting? What are we searching for? What industries? Then you get all this data that comes back in and you have to analyze it. The analysis is almost like a whole second aspect, a whole second level of the search process. And the experience to know how to analyze it and say, “Okay, does this look like a possible conflict that we need to think more about? Or can we skip over this? Where do we need to maybe research further?”
There are many nuances to this. It all comes down to risk. In the end, the trademark search process is really about learning about what risks are out there so that we can properly measure and assess and respond to those risks. And that’s where we work with our clients when we’re doing a search and analysis, is to understand the risk, talk about the risk, and then the client can make a decision about whether they want to go forward knowing the risk, or hopefully knowing that the risk is minimal or whether they want to consider alternatives.
So that’s some of what goes on in my mind when I’m talking and working on trademark searches. I hope that was valuable to you and shed some light on that. If you want to learn more about trademark searching, you can also find a lot more in my recent book on Amazon called, Building A Bold Brand.