Conducting a trademark search

Trademark searches are very important to applicants who are in the process of choosing the right mark for their product or service. It is advisable that a trademark search be conducted before filing a trademark application for registration and before using the mark in commerce. The reason is that it is very likely that the same or a confusingly similar mark may have been previously registered which would preclude registration of the applicant’s mark. In addition to registration, a search is advisable before commercial use of the mark in order to prevent infringement of a similar mark in use.

There are several search engines available for conducting a trademark search. The most commonly used search engines are discussed in this chapter.

The most effective search engine for a trademark in the United States is the U.S. PTO database known as TESS. The database has a record of all registered marks and pending trademark applications at the U.S. PTO. If a trademark owner wants to register his mark with the U.S. PTO, a search on the TESS should reveal if the mark is available. A search on TESS shows records of trademark applications and registrations on both the Principal Register and the Supplemental Register. In addition, this search may be conducted free of cost and at the applicant’s convenience. However, it is important to note that the U.S. PTO trademark examiner will conduct a search when examining the trademark application and even if the mark does not appear on TESS, a search of the mark by the applicant does not guarantee that the mark is available for registration at the U.S. PTO.

In order to register an international trademark under the Madrid Protocol with the World Intellectual Property Organization (WIPO), one needs to conduct a search on the WIPO trademark databases – Romarin and the Madrid Express. The Romarin database contains information of all international marks recorded with the WIPO. The Madrid Express database includes the international trademark registrations that are in force or have expired within the last 6 months. It is advisable that both databases be searched for conflicting marks before an international application under the Madrid Protocol is filed. Like TESS, both Romarin and Madrid Express are free search engines.

Apart from the above, there are several paid search engines that contain records of trademark applications and registrations. One such popular search engine is SAEGIS. SAEGIS offers its users the option to search state trademark registrations and certain foreign country registrations in addition to federal registrations at the U.S. PTO. It is advisable to contact a trademark attorney for assistance in a comprehensive trademark search.

A complete trademark search covers registered and unregistered marks and may be obtained from the following services:

• Thompson & Thompson, 500 Victory Road, North Quincy, MA 02171.
  Phone: 800-692-8833
  www.thompson-thompson.com
• Sunnyvale Center on Innovation, Invention, and Ideas 665 W. Olive Ave., Sunnyvale, CA
  Tel: 408-730-7300
  www.sci3.com
• Trademark Research Corporation, 300 Park Ave. South, New York, NY 10010
  Phone: 800-TRC-MARK
  www.cch-trc.com

The companies listed above provide a trademark search report but not a registrability opinion of the mark.

The U.S. PTO database TESS offers several search forms within which one may conduct a search. There are over 4 million registered, pending and dead trademarks on TESS.

The New User search form or Basic search form is useful for first time users that require a simple search. A search may be conducted of terms and the fields within which they fall. However, these fields are limited to combined word marks, serial or registration numbers and the owners name and address.

The Structured form search or Boolean search is more comprehensive and allows the user to search for terms and fields including the basic index, international classes of filing, description of goods, description of the mark, design description, design code, filing date, attorney of record, owners’ names and addresses, priority date, prior registrations and many more.

An advanced search or Free Form search may also be conducted on TESS. This search is very similar to the structured form search page. However, it offers an additional feature of a single box containing all the fields and field codes. This enables a search of more complexity. This search form also allows the user to combine the Boolean operators.

An ideal search must include a search for trademarks and service marks that sound alike or are similar or confusingly similar to registered marks, foreign translations, phrases, etc. The search forms provide several operators that TESS users must make the most of in order to limit their trademark search. These logical operators are the options to use ‘and’, ‘or’, and ‘not’ in the search. There are also additional operators such as ‘with’ and ‘same’ that are useful.

A search for an international trademark may be conducted on the following two databases at WIPO.

ROMARIN or the Read-Only-Memory of Madrid Active Registry Information contains information on the international trademarks currently in use at the WIPO. Although a simple search form, this database displays a more detailed history of the international trademark applications and registrations than the Madrid Express database. Using this database, a search may be conducted using the international registration number, basic application number, holder’s name, representative, Nice classification, Vienna classification, goods and services etc.

The Madrid Express database is a more structured form and contains information on international trademarks that are pending, registered and those that expired within the last 6 months. The categories of search are similar to that of the Romarin database. The main difference between the two search engines is that the Madrid Express includes both applications and trademark registrations that have expired within the last 6 months and those that are currently in force. It is also said to include “data relating to international applications and subsequent designations that have been received by the International Bureau but have not yet been recorded in the international register of marks.”

The Madrid Express database is a more structured form and contains information on international trademarks that are pending, registered and those that expired within the last 6 months. The categories of search are similar to that of the Romarin database. The main difference between the two search engines is that the Madrid Express includes both applications and trademark registrations that have expired within the last 6 months and those that are currently in force. It is also said to include “data relating to international applications and subsequent designations that have been received by the International Bureau but have not yet been recorded in the international register of marks.”