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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).



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.



This will result in 0 hi…
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 rig…
The Problem with the USPTO: Flaw #3 – Meaning



The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Meaning mean? And how does the USPTO search engine fail in this respect?

"Similarity in meaning or connotation is another factor in determining whether there is a likelihood of …
The Problem with the USPTO: Flaw #2 – Appearance
The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Appearance mean? And how does the USPTO search engine fail in this respect?

"Similarity in appearance is one factor in determining whether there is a likelihood of confusion …
The Problem with the USPTO: Flaw #1 – Sound The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for. This month's newsletter will be about the 3 fatal flaws of the USPTO search engine.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Sound mean? And how does the USPTO search engine fail in this respect?

"Similarity in sound …
What does it take to get a Filing Date?

There are a variety of different dates for any given Federal trademark application – filing date, status date, publication date, first use date, first use in commerce date and registration date. I'll devote a few posts to each one.

Let's start with the first date you'll receive once the application is filed – the filing date.

Here's what the USPTO says about this:

"In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”)."

What?

Let's simplify this paragraph. For any applicant claiming foreign priority or foreign registration, you'll be filing under §44. The rest will be §1, which is going to apply to most US-based applicants, especially small businesses and/or those just starting out.

Okay, so the applic…
Unsolicited Trademark Mailings: A Warning from INTA When TradeMark Express started preparing and submitting Federal trademark applications for clients, we heard almost immediately about official-looking mailings they received requesting more money to either monitor their mark or to be listed in a "trademark registration directory." These unsolicited offers are in no way affiliated with the USPTO and therefore, do NOT require a response.

The appearance of these mailings is the first foot in the door of confusion. They often come on very official looking stationery; an invoice that looks very governmental in form and/or appears to be affiliated with a governmental entity.

Take a look at one of the examples INTA provides on their web site from the United States Trademark Protection Agency (USTPA – see what they did there?): PDF format - USTPA Example Mailing.

The only mailings any trademark owner should most definitely respond to are going to be those directly from the US Patent &a…
Breaking Down the Code

Last month we took a quick look at how to conduct a logo search at the USPTO. This month let's look closer at the USPTO Design Code Manual.

All designs have a 6-digit code, which the USPTO assigns to each filed design. The design search code system is very Dewey Decimal-esque in that each 2-digit section denotes a specific category. Let's take a look at a couple of famous examples:

First two digits, the Category: 02 = human beings

Next two digits, the Division: 05 = children

Last two digits, the Section: 01 = heads, portraiture, busts of children not in profile



The Gerber baby logo is categorized as 02.05.01

Now let's look at a design that contains several codes. This will illustrate just how complex filing a trademark for a logo can be, in terms of researching a logo and providing the correct description on the application to the USPTO.



Mr. Peanut, the logo and mascot of Planters Nuts is categorized into SEVEN different design codes:

02.01.32 - Astronauts (m…
Starting a Business in Florida



Visit the Department of State's Starting a Business page. The Small Business Development Center is also a great resource.

1) Write a business plan

Here are a couple of posts I've devoted to this subject - Business Plans: A Quick Guide and Piecing Together the Business Plan.

The Small Business Administration has a handy page about writing a business plan.

2) Decide on a location

Sunbiz.org has a page devoted to selecting a location with handy links about demographics and economy.

3) Choose a business structure

First, read this great article on how to choose your business structure - click here to read PowerHomeBiz's Choosing Your Legal Structure.

Once you've done that go to the Division of Corporations site, which is where you can search and file corporations, LLCs, LLPs, fictitious names, etc.

4) Taxes

Read the Start-Up Kit for New Business Owners.

5) Licenses & Permits

Business license information can be found here.

Mention our blog & get $2…
It's Graph Time Again!

As promised in this post, I'm revisiting the USPTO's Performance & Accountability Report.

I decided to take a look at the highest number of applications filed based on state residency. Here are the top 6 out of the 310,296 applications filed by residents of the US:

Now let's take a look at these same states to see how many made it to registration. This represents a portion of the 122,266 applications registered to residents of the US. Of course, there's going to be some rollover from those filed in 2006/registered in 2007 and those filed in 2007/registered in 2008 but this gives a pretty fair snapshot:

It still boggles my mind that such a large number of trademark applications are filed that NEVER make it to registration. This is why we always stress to our clients to stay on top of their trademark filings. The USPTO will not keep watch of your trademark; that's your responsibility. Also ensuring that the name is available in the first pl…
TradeMark Express Value Package



We've added a new option when it comes to getting your trademark. TradeMark Express will search your mark in the pending & registered Federal and State trademark files AND in the US National Common-Law files. Based on your approval, we will then prepare AND file your US Federal trademark application - all for one fee of $399. Order this package today!

HOW IT WORKS:

1) US Federal & State trademark research - TradeMark Express will search the pending AND registered Federal AND State trademark files in accordance with the USPTO's policy, namely looking for similarities in Sound, Appearance or Meaning. This involves searching synonyms, spelling variations, word placement, etc.

2) US National Common-Law research - TradeMark Express will search for commercial availability of the mark in numerous files. Businesses have "first use" or Common-Law rights to their trade names in whatever geographic trade area they serve. The US National Comm…
Starting a Business in California



When starting a business in California, start your research at these two sites:

The California Business Portal & The Secretary of State's Starting a Business page.

On the SOS' page, you'll see the Secretary of State details 5 recommended steps:

1) Write a business plan

Here are a couple of posts I've devoted to this subject - Business Plans: A Quick Guide and Piecing Together the Business Plan.

The Small Business Administration has a handy page about writing a business plan.

2) Deciding on a location for your business

If you need assistance, check out the Labor & Workforce Development Agency's Business Investment Services page.

3) Choose a business structure

Entrepreneur has a great article on this subject, Choose Your Business Structure.

4) Taxes

Click here for those documents.

5) License & Permits

Check both of these sites: CalGOLD and the CA Department of Consumer Affairs.

The Secretary of State also has a listing of business resou…
Fun With Graphs

Every year the USPTO publishes an online Performance and Accountability Report, which contains some pretty interesting statistics about patents & trademarks. I used this site to create a couple of graphs to provide a visual on these stats.

A 27% increase in 4 years is pretty significant. The increase every year goes to show how important folks are taking their trademarks & brand identity.

The above is a 5 year look at the number of registrations issued. As you can see, the number of applications filed versus those that move to registration differ greatly. This is going to be for a number of reasons -- refusals, abandonments, oppositions, etc.

Look at 2006 - 128,672 applications never made it to registration. Even if each one of those applications consisted of only 1 class filed, that's a total of $41,818,400. Let's even say that all 128,672 applications used TEAS Plus -- that's still a total of $35,384,800! That's staggering.

There's all sorts o…
Starting a Business in...
Being in the trademark biz, we get a lot of questions from folks about starting their own business in their state of residence. Admittedly, I don't know a lot of the ins & outs required for each state. I think it's high time I educated myself.

That being said, I'm going to dedicate a post a week to the various resources, steps & sites for each state. Once a week seems to be a good pace. I think anything more than that would make this blog a bit of a boring read.

Anyone have a state in mind they'd like to know more about? If so, leave a comment or email me at shannon@tmexpress.com
Logo Search: Trudging through the USPTO


Searching for designs on the USPTO site is a bit tricky. I'll explain it step by step.
First, go to this link. This is the searchable design search code manual. Type in simple keywords that describe your logo. For instance, typing in telephone brings up the 6-digit codes for telephones, telephone poles, answering machines, etc. Make note of all the 6-digit codes relevant to your logo.Second, go to this link. This is the main trademark hub page. From here you'll see 2 columns. Look at the right hand side for a link that's titled Search. Click on that.Now click on Structured Form Search (boolean). In the first search term box, type in the 6-digit code, no spaces & no dots. Change the field to Design Code. Stopping here will likely result in too many hits to look at so let's use the rest of the search boxes to narrow it a bit.

Change the operator to AND. In the next search term box, choose one keyword that describes your goods/serv…
Copyrights & Trademarks: Do You Need Both?

Protecting the intellectual property aspects of your business is a worthwhile investment. However, it is difficult to know what form of intellectual property works for what facets of your business. Let's take the time to break all that down.

Copyrights:

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

To protect text as it appears on advertising copy, speeches, pamphlets, brochures, online works, reports, etc. a Literary Works application would be filed.

To protect pictorial or graphic items such as technical drawings, posters, labels, games, etc. a Visual Art Works application would be filed.

Only a few items that could be protecte…
Small Business Trademarks: Who Needs 'Em?


Anyone that's started a small business or is in the throes of starting a small business knows how overwhelming it can be just to get to opening day. You've got licenses & permits to think about, what sort of business entity structure is right, where the money is going to come from, and on and on. Phew! While it can almost be too overwhelming, your entrepreneurial drive and your passion for your business will get you through it.

Now when it comes to your business name, we can all agree that that's an important, if not the most important feature of your business. Your small business name is the face, if you will, of your products and/or services. It's how your customers will come to know you, how they'll get back to you and how they'll refer you to new customers.

Let's say you found the perfect name for your small business. What a lot of folks do at this point is usually a misstep – filing for a business entity …
US Patent & Trademark Office: Navigating the Web Site




Anyone that's had to slog through a governmental web site knows how confusing it can be at times. That being said, let's take a virtual walk together through the web site of the US Patent & Trademark Office.

Start at the home page.

You'll see a headline of sorts along with 3 columns of information. Left hand column are a series of links that drop down to show even more links – more about this to follow. The middle column is the site's top news with various headlines and blurbs. The right hand column are banner links that go to various pages/sites, such as the Department of Commerce, Kids' Pages, jobs at the USPTO, etc.

Left hand column – we're going to concentrate on 2 of the 13 available links.

Click on Patents – a drop down should open with a series of numbered links.

Let's take a look at a few a bit closer:

The very first link, not numbered, Patents main page takes you to the hub of the US patent uni…
Viva Las Vegas


Photo Source

I've got Vegas on the brain as I'll be heading out that way tomorrow. As a result, the blog posts won't be happening again until next week when I come back, hopefully with a little more jingle jangle in my pockets.

So I thought I'd use Las Vegas as an inspiration point to check out some of the more interesting Vegas-tinged trademarks:

Dave's Fabulous Las Vegas Barbecue Sauce. The logo is a take off on the famous Las Vegas sign.

Erotic Suite Palms Las Vegas. The suite features a dancer's pole, a round bed & a $4000 per night cost.

What happens in VEGAS...Ends up on the Internet... is currently being opposed by the Las Vegas Convention and Visitors Authority based on their filing of What Happens Here, Stays Here, which is suspended pending the disposition of What Happens in Vegas Does Not Always Stay in Vegas & 2 marks for What Happens Here, Stays Here, which is the LV Convention & Visitors Authority mark.

Looking further into th…
Refusal on Basis of Ornamentation

I've devoted a few posts to the subject of trademarks and clothing lines but it wasn't until I was talking with a client yesterday that I realized I had answered the what but not the why.

I was explaining to the client that submitting a picture of a t-shirt with his clothing line name on the front would not suffice as proof of use for the USPTO. He then asked me why. After getting off the phone, I realized that while I had answered him I hadn't fully addressed it here.

The title of this post is the response you'd likely get from the USPTO if you submit a photo of a t-shirt with your name and/or logo displayed on the front.

What does refusal on basis of ornamentation mean exactly?

"Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans or other trade dress. This matter should be refuse…
How Slow Can the PTO Go?




I had intended the post for today to be a follow-up to these 2 posts:

O Romeo, Romeo & When Applications Go Wrong.

To sum up, these posts were about potential problems for the applications of Romeo & for La Bella Bella Maternity. And my intention had been to compare my predictions with how the USPTO interpreted the applications.

However, both of these applications have yet to be assigned to an examining attorney. Romeo filed on January 4th, which means it's been 72 days. La Bella Belly Maternity filed on January 17th, which means it's been 59 days.

Now, it's not news that the USPTO takes awhile to get things moving. But this lag in movement does go to show how vital it is to ensure that the name is legally available prior to filing.

Both of these marks have the potential of being refused for likelihood of confusion. Should that be the case, the USPTO will let the applicant know by way of an Office Action. Now, if either of these marks have to un…
McCain Winning '08 Presidential Trademark Race

The presidential race is heating up and with any flurry of political activity comes an influx of trademarks hoping to capitalize on the nation's interest.

John McCain 2008 - The Exploratory Committee currently has two Federal trademarks, one registered & one pending, for "McCain Space" and "McCain." These applications were filed in January 2007 for, among other things, "promoting the public awareness of a candidate for election." A month later, Senator McCain announced on Late Show with David Letterman that he was seeking the nomination. It appears the trademarks were a harbinger of things to come.

Senator Clinton has been in the news recently about her use of "Solutions for America," which is a trademarked phrase owned by the University of Richmond. According to an article by Scott Jacshik of Inside Higher Ed, the university has "refused to answer any question about why the institutio…
®, Registered vs. TM, Trademark



The TM or SM symbol is to be used for marks that either have a pending trademark applicationclaiming the rights to the mark.

The ® symbol is to be used for marks that have a Federally registered trademark.

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively

Proper Use of the Symbols:

You can freely use the TM or SM symbol while your application is pending OR if you're simply claiming the rights to the name. Sometimes these symbols are governed by local or state laws so it may be best to double check. But more often than not, you're free to use it.

The ® symbol should only be used once you've received your Federal trademark regist…
Trademark vs. Service Mark

Simply put, trademarks are for goods while service marks are for services. When discussing either, it is common to use the term "trademark", even when discussing a service use, because the handling of either is interchangeable by both the USPTO and all 50 Secretary of State Offices.

The USPTO says that a "service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms 'trademark' and 'mark' are often used to refer to both trademarks and service marks."

Let's look at each term in more detail

Trademark:

The USPTO's definition: trademark "protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods."

If your name and/or logo appear on the tangible goods that you're selling, you'd be filing for a trademark.For instance, let'…