Unlike the naming process, which is a creative process, the trademark search process is scientific, and the evaluation of the trademark search results follows certain rules. Learn the process and the rules and you will be conducting trademark searches like a pro. Follow the tips in this post while conducting a trademark search and interpreting the results, and you will develop a list of names that you or your client will be able to use. So, print this post and keep it nearby. Do enough trademark searching and eventually, you will not have to refer to this post during the naming process because these tips will become second nature.
- Break up the name you are searching before worrying about different spellings. The Trademark Office is more likely to refuse to register a name because it shares a common element with a prior registered mark than because the marks sound the same. Additionally, breaking up a name and using the right Wildcard symbols (see Tip No. 2) will more often than not return different spellings of the name you are searching for. However, if you are aware of alternate spellings of the name you are searching, then include them in your trademark search plan. Breaking up a name and searching similar spellings are not mutually exclusive.
- If you are using BOB to conduct your trademark search (and you should) use the $$ and OR Wildcard symbols frequently. After breaking up the name you are searching place the double dollar sign ($$) on either side of each name part in Column D in BOB’s Trademark Search Worksheet and the OR symbol in between each name part. For example, if the name you are searching is CALIBURGER use the Wildcard symbols like this: $$CALI$$ OR $$BURGER$$. Follow this format for all the names you search during the naming process, and you will find all the potentially problematic marks that you need to consider.
- The relatedness of goods or services matter, not International Class Numbers. There are opportunities for similar trademarks to exist within the same International Class Number. Don’t reject a name just because there is a similar name in the same International Class Number. Conversely, a similar mark in a different International Class Number can be problematic if the goods or services are related. Here is how to tell if goods or services are related:
- If the goods or services are competitive, then they are related.
- If the goods or services are not competitive, then they are related if: (A) the goods or services are complementary; (B) the goods or services are marketed under the same or similar conditions to the same general class(es) of purchasers; or (C) the goods or services are the types that could reasonably be licensed by the prior trademark owner.
- Multiple trademark owners using the same term for the same or similar goods or services means you can use it too. PROVIDED you combine it with another term that is different than the term another trademark owner is using. For example, there are multiple trademark owners using the term BERRY for yogurt: PINKBERRY, YOGIBERRY, SWIRLBERRY, TRUBERRY, FUNKIBERRY, BRRRBERRY, CHERRYBERRY, and COWBERRY. This means you can use BERRY too if it is combined with something that is different than what has already been attached to BERRY. Psst – this one reason why we break up the mark when we search.