Trademark Searching: A Desk Reference

 
This manual is designed to be a desk reference for new associates and practicing trademark attorneys. The first section gives a brief overview of trademarks, what they are, what makes them strong or weak and what can and cannot achieve federal registration. The focus of the second section is on the actual search. It details different search strategies and economical search methods. The final section is the reference section and contains the various numbers for help desks in the most used search databases. This also contains a clear version of the Patent and Trademark Offices listing of the International Classification codes.
 
ANALYSIS OF THE MARK:
 
Trademark analysis begins with determining whether the potential client has been using a mark to represent their goods in interstate commerce. A mark currently being used to identify a product in interstate trade is considered to be in use with respect to federal registration. Conversely, the client may have an intent to use the mark but has not attached the mark to goods within interstate trade channels.  
The second type of assessment determines what type of trademark the client needs to increase the market value of his goods or services. There are four types of trademark that can be recorded on the federal register at the Patent and Trademark Office. The four types of marks are:
Once the mark is decided upon by the client a trademark search must be performed to minimize the likely hood of confusion with a similar mark. All goods and services are categorized in specific groups and identified by an International Classification code. These codes are utilized during a trademark search to narrow the area a similar mark may be already in use. There are forty-two classifications for goods and services covering a wide array of products.
 
The strength of a trademark in measured by its inherited distinctiveness. Distinctiveness means that there will be no public confusion with a preexisting mark. The strength of a mark in its infancy may hinge on the amount of advertising capital available. Arbitrary marks are the strongest but require the most capital to establish in the market. On the other hand, descriptive marks are very weak but make it easy for the public to identify the nature of the product. These need less advertising resources to establish a firm place in the market. There are four levels listed strongest to weakest. The next step in analyzing a mark is to identify if the mark can be registered and enforced. The Lanham Act lists the types of marks that are not suitable for registration. The follow types of mark will not be granted a federal registration. All goods and services are sold in a particular channel of trade. The possibility for confusion among consumers depends largely on how a product is used and its projected consumer base. For example, Trilogy Inc., sells harps to musicians. A second company, Trilogy Industries, sells surgical equipment. Although both companies use the name Trilogy they operate in separate channels of trade. Therefore, the likelihood of confusion is minimal even if both products are sold in the same geographical area.
 
SEARCHING THE MARK
 
The principal obstacle to trademark registration is the possibility of public confusion, which may result in an infringement suit. This obstacle demonstrates the need for information on the potential mark. Initial information is collected from the client. An effective way of collecting the information is with a client questionnaire. (See appendix A) The client's information is utilized to do a preliminary search. This search is designed to identify obvious conflicts, which would disqualify the mark from registration. However, this initial search is superficial. A more comprehensive search, known as a full search, is necessary to determine the availability of the mark. Marks that are not excluded by the preliminary search may then be sent to a professional search firm who conduct the full search using federal, state, common law, international, and domain name databases. The expense of a full search is insignificant compared to the cost of litigating an infringement suit.
 
Preliminary Search: The question of how extensive the search needs to be is determined by the outcome of the preliminary search. One of the most overlooked strategies to achieve a cost efficient search is to rely on the professional researches at each databases help desk. This free service is designed to help trademark attorneys formulate the most effective search. Help desks can be called as many times as needed and some are available twenty-four hours a day.
 
In the event that you cannot reach a help desk you will need to formulate effective search terms for the potential mark. The initial search should then begin with an exact word search on the mark. This search is designed to find any other mark that is identical to your mark. To perform an exact word search simply type in the name or string of words in the mark. If this first search does not disqualify your mark the next step is a search of the most distinctive word in the mark. For example, if your mark is Trilogy Instruments you would type in Trilogy by itself to find any marks using the word Trilogy. A distinctive word will produce a narrower result than a search on a common word. Common words, such as instrument(s), may produce multiple hits that need to be limited further by searching.
 
A prefix and suffix search is an effective way to further tailor a search. This search uses your word and gives variations of it by adding prefixes to the beginning and suffixes to the end of the mark. This is an important search because it finds marks that are similar phonetically and may lead to public confusion. For example: the word search on "Nation" would find "Nationsbank," "International," "Nation's." In most databases this word would be searched using some type of truncation such as: Nation!, Nation?, Nation*, or Nation#. This technique is also a good way to find corrupted spellings of common words such as Zantac and Zentax, which are phonetically similar. Refer to each databases manual or help desk to find which term should be applied. The final element that should be kept in mind is to pay close attention to any similar marks within your International Classification or goods and services.
 
Full Search: Once your mark has survived the preliminary search you must do a full search of the mark. This is a more comprehensive search of U.S. federal, state, common law, international and domain names databases. Further, this will search the mark's design, and the product's trade dress, colors, sounds and scents. The federal database search provides a more in depth search than conducted in the preliminary search. This search will expand on the preliminary search and include abbreviations, punctuation, synonyms, and English translations of foreign words. The state database covers marks that have been registered only with the respective state or U.S. territory. Common law databases are difficult to search because you are trying to find marks that have not been registered. Some of the databases searched are business directories, yellow pages, trade and regular magazines and newspapers. International databases include foreign nations as well as combined European Union databases such as the World Intellectual Property Organization. Finally, a domain names search will cover Internet domain names that are similar to your mark.
 
Most firms will hire a professional search firm to conduct the full search of a potential mark. Professional search firms will be more efficient than an individual attorney search and therefore are more cost effective. Most firms will conduct and return a search within five days or for an extra fee deliver a search back the same day. This method of search also lowers your exposure to the possibility of an infringement suit.
 
INTERNATION CLASSIFICATIONS
 
GOODS
 
List of numbers of every damn search desk we can lay our grubby lillel hands on.
 
Class 1 (Chemicals)
Explanation
 
This class mainly includes chemicals products used in agriculture, industry, and science, including chemicals that go into the making of products in other classes.
This class includes chemicals used in:
Does include: Does not include:
Compost Raw natural resins (Cl. 02)
Salt for preserving object other than foods Chemical products in medical Science (Cl. 05)
  Fungicides, herbicides and preparations for destroying pest (Cl. 05)
  Adhesive for stationary and household use (Cl. 16)
  Salt for preserving food (Cl. 30)
  Straw Mulch (Cl. 31)
 
Class 2 (Paints)
Explanation
 
This class mainly comprised materials used in paints, colorants, preparations, and products that protects against corrosion.
 
This class includes paint used in:  
Does include: Does not include:
Paints, varnishes and lacquer for industry, handicrafts, and arts Paint boxes (articles used in school) (Cl. 16)
Dyes for clothes Unprocessed artificial resins (Cl. 01)
Colorants for food and beverages Laundry bluing (Cl. 03)
  Cosmetic dyes (Cl. 03)
  Mordants for seeds (Cl. 05)
  Insulating paints and varnishes (Cl. 17)
 
Class 3 (Cosmetics and Cleaning preparations)
 
Explanation
 
This class includes mainly cleaning and toilet preparations.
 
This class includes:  
Does include: Does not include:
Deodorants for personal use Chemical chimney cleaners (Cl. 01)
Sanitary toiletries preparations Degreasing preparations for ins in manufacturing (Cl. 01)
  Deodorants other than personal use (Cl 05)
  Sharpening stones (hand tools) (Cl. 08)
 
Class 4 (Lubricants and Fuels)
 
Explanation
 
This class mainly consists of industrial oils and greases, fuels, and illuminants.
 
This class includes lubricants and fuels used in:  
Does include: Does not include:
  Certain special industrial oils and greases. (consult PTO Alphabetic List of Goods)
 
Class 5 (Pharmaceutical)
 
Explanation
 
This class is mainly pharmaceutical and other medical preparation.
Does include: Does not include:
Sanitary preparations for personal hygiene and medical purposes Sanitary preparation for toiletries (Cl. 03)
Deodorants other that for personal use Deodorants for personal use (Cl. 03)
Cigarettes without tobacco, for medical purposes Supportive bandages (Cl. 10)
 
Class 6 (Metal goods)
 
Explanation
 
This class mainly includes unwrought and wrought common metals as well as any simple products made from these elements.
 
This class includes:
Does include: Does not include:
  Bauxite (Cl. 01)
  Mercury, Antimony, alkaline and alkaline-earth minerals (Cl. 01)
  Metals in foil and powder form for painters, decorators, printers, and artists (CL. 02)
 
Class 7 (Machinery)
 
Explanation
 
This class mainly includes machines, machine tools, motors, and engines.
This class includes:
Does include: Does not include:
All types of engine and motor parts Certain special machines and tools (consult PTO's Alphabetical List of Goods)
Electric cleaning machine and apparatus Hand operated tools and implements (Cl. 08)
  Motors and engines for land vehicle (Cl. 12)
 
Class 8 (Hand Tools)
 
Explanation
 
This class mainly includes hand operated tools in their respected fields.
 
This class includes:
Does include: Does not include:
Cutlery of precious metals Certain special instruments (consult PTO's Alphabetical List of Goods)
Electrical razors and clippers Motor driven machine tools and implements (Cl. 07)
  Surgical cutler (Cl. 10)
  Paperknives (Cl. 16)
  Fencing Weapons (Cl. 28)
 
Class 9 (Electrical and scientific apparatus)
 
Explanation
 
This class mainly of instruments and apparatus used for scientific research in laboratories and instruments and apparatus for controlling ships and transmitting orders. Also included are certain electrothermic tools (electric soldering irons) and all apparatus and devices which, if not electrical, would be listed in other classes (auto cigarette lighter).
 
This class includes:
Does include: Does not include:
  Electromechanical apparatus for the kitchen and other motor driven instruments (Cl. 07)
  Electric razors and clipers (C. 08)
  Electrical toothbrushes and comb (Cl. 21)
  Electrical apparatus for cooking, heating liquid, ventilating, etc. (Cl. 11)
  Clocks, watches, and chronometric devices (Cl. 14)
  Control clocks (Cl. 14)
 
Class 10 (Medical apparatus)
 
Explanation
 
This class is comprises mostly of medical apparatus, instruments, and other related articles.
 
This class includes:
Does include: Does not include:
Special furniture for medical use  
Hygienic rubber article  
Supportive bandages  
 
Class 11 (Environmental Control Apparatus)
 
Explanation
 
This class includes good that can manipulate and control the environment
 
This class mainly includes apparatus for:
Does include: Does not include:
Air conditioning Steam producing apparatus (parts of machine) (Cl. 07)
Bedwarmers, hot water bottles, warming Electrically heated clothing (Cl. 09)
pads, electric and non-electric  
Non medical, electrically heated cushions and blankets  
Electrical kettles  
Electrical cooking utensils  
 
Class 12 (Vehicles)
 
Explanation
 
This class includes land, air and sea vehicles and their respected propellants.
 
This class includes:
Does include: Does not include:
Motors and engines for land vehicle Certain parts of vehicle (consult PTO's Alphabetical List of Goods)
Coupling and transmission components for land vehicles Metal railroad materials (rails) (Cl. 07)
Air cushion vehicles Motors, engines, couplings and transmission components other than for land vehicles (Cl. 07)
  Parts of motors and engines (all kinds) (Cl. 07)
 
Class 13 (Firearms)
 
Explanation
 
This class includes firearms and pyrotechnically products.
 
This class includes:
Does include: Does not include:
  Matches (Cl. 34)
 
Class 14 (Jewelry)
 
Explanation
 
This class includes mostly precious metals, goods in precious metals, jewelry, clocks, and watches.
 
This class includes:
Does include: Does not include:
Jewelry (i.e. imitation and made with precious stones or medals) Certain goods in precious stones (classified accordingly to their function)
  Cutlery (Cl. 08)
  Electric contacts (Cl. 09)
  Pen nibs of gold (Cl. 16)
  Amalgam of gold for dentist (Cl. 05)
  Objects of art not in precious metals (classified accordingly to the material of which they consist)
 
Class 15 (Musical Instrument)
 
Explanation
 
This class includes musical instruments
 
Does include: Does not include:
Mechanical pianos and their accessories Apparatus for the recording, transmission, amplification, and reproduction of sound (Cl. 09)
Musical boxes  
Electrical and electronic instruments  
 
Class 16 (Paper goods and printed materials)
 
Explanation
 
This class includes mostly paper, goods made from that material and office requisites.
 
This class includes:
Does include: Does not include:
Paper knives Certain goods made of paper and cardboard (consult PTO's Alphabetical List of Goods)
Duplicators Colors (Cl. 02)
Plastic sheets, sacks, and bags for wrapping and packaging Hand tools for artists (Cl. 08)
 
Class 17 (Rubber Goods)
 
Explanation
 
This class includes electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.
 
This class includes:
Does include: Does not include:
Rubber materials for recapping tires  
Padding and stuffing materials of rubber or plastics  
Floating anti-pollution barriers  
 
Class 18 (Leather Goods)
 
Explanation
This class includes mostly leather, leather imitations, travel goods not included in other classes and saddlery.
 
This class includes:
Does include: Does not include:
  Clothing, footwear, headgear (consult PTO's Alphabetical List of Goods)
 
Class 19 (Nonmetallic building material)
 
Explanation
 
This class includes mostly nonmetallic building materials.
 
This class includes:
Does include: Does not include:
Semi-worked woods (ex. beams and planks) Cement preservation and cement-waterproofing preparation (Cl. 01)
Veneers Fireproofing preparations (Cl.01)
Building glass (ex. Glass tiles)  
Glass granules for marking out roads  
Letter boxes of masonry  
 
Class 20 (Furniture and articles not otherwise classified)
 
Explanation
 
This class includes mostly furniture and its parts and plastic goods, not included in other classes.
 
This class includes:
Does include: Does not include:
Metal furniture and camping furniture Certain special types of mirrors, classified accordingly to their function (consult PTO's Alphabetical List of Goods)
Bedding (Ex. mattresses) Special furniture for laboratories (Cl. 09)
Looking glasses and furniture or toilet mirrors Special furniture for medical use (Cl. 10)
Registration number plates not of metal Bedding linen (Cl. 24)
Letter boxes not of metal or mason Eiderdowns (Cl. 24)
 
Class 21 (Housewares and glass)
 
Explanation
 
This class mainly consists of furniture, its parts, and plastic goods not listed in other classes.
 
This class includes:
Does include: Does not include:
Utensils and containers for household and kitchen use Certain goods made of glass, porcelain and earthenware (consult PTO's Alphabetical List of Goods)
Candle extinguishers not of precious metal Cleaning preparations, soap, etc (Cl. 03)
Electric cords Small apparatus for mincing, grinding, pressing, etc driven by electricity (Cl. 07)
Electric toothbrushes Razors and shaving apparatus, and clippers (hand instruments) (Cl. 08)
Dish stands and decanter stands Cooking utensils, electric (Cl. 11)
  Toilet Mirrors (Cl. 20)
 
Class 22 (Cordage and fibers)
 
Explanation
 
This class includes mostly ropes and sail manufacturing products, padding and stuffing materials and raw fibrous textile materials.
 
This class includes:
Does include: Does not include:
Natural and artificial cords Certain nets, sacs, and bags (consult PTO's
 
Class 23 (Yarns and threads)
 
Explanation
 
This class consists mainly of Yarns and threads used for textile purposes.
 
Class 24 (Fabrics)
 
Explanation
 
This class include mostly textiles and textiles covers for household use.
 
This class includes:
Does include: Does not include:
Bedding linen of paper Certain special textiles (consult PTO's Alphabetical List of Goods)
  Electrically heated blankets (Cl. 10)
  Table linen of paper( Cl. 16)
  Horse blankets (Cl. 18)
 
Class 25 (Clothing)
 
Explanation
 
This class includes:
Does include: Does not include:
  Certain clothing and footwear for special use (consult PTO's Alphabetical List of Goods)
 
Sheets
 
1. Attorney Checklist
 
2. Client sheet =mark questionair: appendix a where did idea come from , is mark in use, what is product, how much money do you have for establishment of mark, lawyers fees, area of use now and in future
 
3. Poor client search strategy do it yourself for dummies=prelim. Libraries, PTO,
 
4. Tips for attorney to help poor client.
 
CLIENT TRADEMARK QUESTIONNAIRE
 
This questionnaire has been designed to help our attorneys gather preliminary data to facilitate the trademark registration process. Please answer all questions as truthfully and completely as is possible. Should you not understand any part of this form please contact your attorney for further details.
 
Name of Potential Mark: __________________________________________________
(Should your mark have a drawing please attach to this sheet)
 
Your Name: ____________________________________________________________
 
Address: _______________________________________________________________
 
Phone Number: _________________________________________________________
 
1. Where did you get the idea for your mark?
 
2. To the best of your knowledge is anyone currently using your trademark?
 
3. Are you the owner or the co-owner of the mark? (If co-owner please specify)
 
4. Is your mark currently attached to your goods or services? If yes, proceed to question #4. If no, proceed to question #5.
 
5. Are the goods or services your mark is attached to being sold in one or more states? If yes, proceed to question # 6. If no, proceed to question # 5.
 
6. Do you intend to sell your goods outside of the state in which your business currently resides?
 
7. Is your mark registered in a foreign nation? If yes proceed to question #8. If no, proceed to question # .
 
8. Have you used your trademark in connection with goods or services sold in the United States? If yes, proceed to question #10. If no, proceed to question #9.
 
9. Do you intend to use your trademark in connection with goods or services sold in the United States?
 
10. Is the address of the trademark owner a foreign address? If yes, is there a United States Address that can be utilized?
 
11. What goods or services will your mark be attached to?
 
12. To the best of your knowledge is anyone currently using your trademark?
 
13. How is your mark attached to, or displayed on your goods or services?
 
14. Can you provide a sample of your mark in use? If the sample is more than 8.5" x 11" can you provide a picture of the mark in use?
 
To the best of my knowledge I have answered the above questions accurately.
 
Signature: _______________________________________________ Date: _________
 



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