Don’t lose the dominant terms for the trees. As trademark searchers we have all been there. Starring at a screen with hundreds of search results. Sometimes that list is unavoidable because of the particular mark we were asked to search. But more often than not, the list is our own doing. One thing that can dramatically cut down on the search results is focusing the search on the dominant terms of the mark and leaving any generic or descriptive terms out.
How do you decide what terms are nondistinctive and could be left out of the trademark search? The best way to answer this question is to think about the concept of “material alteration.” A trademark is materially altered if the removal of the word would change the overall commercial impression of a mark. Generally, deleting the generic name of the goods or services will not change the overall commercial impression of a mark. Likewise, deleting a word that merely describes the goods or services will not change the overall commercial impression of a mark.
Most of the time, when asked to perform a trademark search on a company name, the company name will include some form of COMPANY or in the case of a financial institution BANK. Excluding terms like this will increase the effectiveness of your trademark search because it will directed at the term consumers will rely on to distinguish the proposed mark from other COMPANY or BANK marks.
Another trend is to combine a distinctive word with a descriptive word. For example, there are over 500 live marks that include the word CHAT for some type of mobile application or website. The term CHAT is merely descriptive of communicating with others. Including this term in a trademark search will only unnecessarily increase the references that must be reviewed because no one at this point can exclusively own the right to CHAT for some form of communication application.
Focus your search on what matters, dominant terms, and you will increase the effectiveness of your trademark searches.