Spend a little time learning how to use wild card symbols and logical operators in your search equations and you will improve the accuracy of your search results. And they really are not that complicated to use. Using truncation symbols is something that could have benefitted Lawrence Charles before he spent what had to be thousands of dollars on his failed attempt to register the TEABLY mark.
Mr. Charles sought to register the mark TEABLY (in standard characters) for “tea-based beverages” in International Class 30. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark TEABLEE for, among other goods, “tea infusers . . . tea strainers . . . tea balls . . . tea caddies . . . tea canisters . . . tea sets” in International Class 21. Mr. Charles never amended his goods description to reflect the actual nature of his tea-based beverage, and as a result it was an easy refusal for the Trademark Trial and Appeal Board to affirm.
Unfortunately for Mr. Charles, this refusal could have been avoided from the beginning with a proper trademark search. It is important to spend time considering the possible variations of a proposed mark. Once you have identified the possible variations, you can bet there is another variation out there that you did not identify. The way we guard against this possibility is through the use of truncation symbols.
Wild card symbols differ by the databases you are using, so it is important to review whatever key is available to explain the wild card symbols for that database. In the case of BOB’s database, the $$ wild card symbol will look for unlimited space and non-space characters. For Mr. Charles’ search, the mark would have looked like TEABL$$. Considering the similarity of the marks only, this search would have retrieved the prior registered TEABLEE mark.
Mr. Charles likely included in his search equation International Class 30 because that is where his tea-based beverage would be classified. This was his second mistake because focusing on International Classes instead of relatedness of goods is wrong. As we saw in his case, goods classified in International Class 21 were found to be related to his tea-based beverage in International Class 30. That’s why BOB focuses on relatedness of the goods not International Classes when it conducts a trademark search.
If the TEABLEE mark was returned as a potential knockout it does not mean that Mr. Charles could not move forward with his TEABLY mark. What it means is that he needs to be prepared for a refusal and start the application on the right foot.