Ever wonder what dance parties and trademark searching have in common? Neither did we. But I can’t deny this title reminds me of a dance party. Maybe because today is Friday (today is Friday, right?).
We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet. If done properly, a bit of self-help can cut down on legal expenses. However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”
Although the PTO website isn’t my preferred search tool, when I do use it (because it’s free), I like to use the “Advanced Search” feature. The Advanced Search is more complicated to learn, but I think it’s the best way to conduct a thorough preliminary search through the PTO website. Although each search is different, here are some usual tricks that I employ:
- Active Trademarks Only. I usually limit my queries to “active trademarks only” by using the search term (LIVE)[ld]. Adding this to your query will filter out inactive marks. Inactive marks can be important in full searches, but often aren’t worth reviewing on a high-level first pass. (By the way, when using the “Advanced Search” feature on TESS, the bracketed terms denote the search fields, while the search terms are contained in parenthesis – so (LIVE)[ld] means you’re searching the “Live/Dead” field for all “Live” marks).
- Determine Relevant Goods Keywords and International Classes. I limit my searches to specific “International Classes” or goods/services of interest by using the search fields [IC] and/or [GS]. If you operate in a very specific field, you might spend 10-15 minutes coming up with a robust list of keywords that might be found in other applications in your field. For instance, if you make airplanes, you might try including: (air plane airplane aircraft aerial helicopter drone flight airport airline jet propeller transport transportation)[gs]. Keep that list of search terms for future use, so you won’t have to draft a new query each time you have a new brand to explore.
- Outsource Design Searches? Searches for marks incorporating designs can be even more complicated. Sometimes you will want to send those to a third-party search company, but if you want to get a quick peek into whether significant obstacles exist, you can try using the [DE] field for words contained in the description of the mark, e.g. (heart or ribbon)[DE]. You can also try using the [DC] “design search code” field, but that takes a bit more effort to master.
- Go “Big Picture” for Multiple-Word Mark Searches. If it’s a word mark you’re searching, devise a search strategy before you begin searching. I can’t tell you how many hours this has saved me over the years. For example, for multi-word marks – e.g. THE BEST KINGDOM IN THE LAND – it’s sometimes sufficient to search all the possible word combinations, but not search variations of the individual words. And it’s often wise to drop the less important words (e.g. articles or prepositions) from these searches. So, for instance, you might search (BEST and KINGDOM and LAND)[bi,ti] and (BEST and KINGDOM)[bi,ti] and (BEST and LAND)[bi,ti] and (KINGDOM and LAND)[bi,ti]. (For this specific example, I might also search variations on the word “KING” – so as to capture “KING” and “KINGSHIP” – but that’s a judgement call).
- Cozy Up To Boolean and Truncation Operators for Single-Word Mark Searches. If your search is for a single-word mark, you’ll certainly want to search variations of the word. You can do this using “Boolean” and “truncation” operators available in the PTO’s advanced search feature. For instance, a query for (*SHOE*)[bi,ti] will return results for BOAT SHOE and SHOEBOX. A query for (B?G)[bi,ti] will return results for BIG, BUG, BOG, etc. At the conclusion of your search, take a minute to consider what marks might hypothetically be considered similar to your mark, and make sure you’ve run queries sufficient to capture them all.
And then have a dance party. It is Friday, after all.