Is a free trademark search good enough?

Trademark Law0 comments

There’s a new trademark search platform in town.

TESS (the Trademark Electronic Search System) retired after 23 years to make room for the United States Patent and Trademark Office’s (USPTO) new system:

Trademark Search.

The name may be simple, but the platform really isn’t.

As the USPTO works out the kinks with its new system, the results of your free trademark search can be a bit jumbled up.

The search engine isn’t very intuitive – you’ll probably need to set aside several hours for a basic search now.

And these new changes may leave you wondering if a free trademark search before you file is good enough.

Or if it’s time to work with an attorney.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Conducting a knockout search on the new platform

Conducting your own free trademark search, otherwise known as a knockout search, is always a good idea.

It can help you save time and money before you actually call up a Trademark Attorney.

But only if you know how to do it correctly.

With the new system, there are two different search types to choose from:

  1. Basic Mode
  2. Expert Mode

Conducting a free trademark search in Basic Mode

In basic mode, you can run simple searches for a few things:

  • the name of the trademark,
  • goods and services, 
  • an application’s serial number, 
  • a registration number, 
  • the owner or applicant, and 
  • a mark description (for logos, imagery, or words)

Just select what you’re searching for from the search dropdown menu.

Conducting a free trademark search in Expert Mode

To take it a bit further, expert mode allows you to select the Class Filter from the left-hand menu and search for specific classes.

You can even select coordinated classes (those the USPTO has grouped together for goods and services that are closely related).

And you can search by field tags – a “code” you can add to your search to find detailed information.

For example

The field tag [on] would search and return matching owner names.

A note of warning here:

The new system no longer provides one-click access to a summary of information about the specific registration or application.

You’ll need to know how to navigate the Trademark Status and Document Retrieval (TSDR) page to find relevant information.

Why you should do your own search

Before you even start your search on the Trademark Search platform, make sure you’ve done a little sleuthing first:

–Look for your trademark on social media sites

–Check out domain hosting sites

–Dig around on Google

If that quick check doesn’t return any conflicts, you’re probably ready to try running a search on “basic mode” to dive deeper.

Doing your own search means you can confidently move on to the next step of hiring an attorney for a comprehensive search.

The difference between a comprehensive search by an attorney and your free trademark search

So what will an attorney do differently than you can do with your own free trademark search?

To be honest, you can do a lot of the same things an attorney will do for you if you have the time and energy to dedicate to your search.

For example, these are things your attorney will do that you could do if you know how:

–Narrow down the search by class

–Sort through canceled and abandoned registrations

–Take coordinated classes into account and sift through all of those

In addition to exploring all the variations of a mark, including

-plurals or nonplurals

-each word by itself (if your trademark has more than one word)

-any acronyms and what they stand for

-phonetic equivalents

-all English equivalents if the mark is in another language 

And running all those variations through Trademark Search to check for other applications or existing registrations.

But your attorney will also expand the trademark search to include state and common law trademarks that could cause potential headaches down the road for you.

Not to mention that a proper comprehensive search can take hours and hours thanks to the immeasurable different variations of the trademark.

Because if there’s even one misspelling or incorrect search option, you may think you’re in the clear when you really aren’t.

And no one wants to find out they aren’t in the clear after they file their trademark application.

When your free trademark search goes wrong

Shortly after the launch of Trademark Search, a client came to me after filing her own trademark application. (She had used the new platform to run her own knockout search.) 

2 weeks after filing, she had an email in her inbox: “Cease and desist.” 

Turns out there actually was a business with an extremely similar mark for extremely similar services that held a trademark registration with the USPTO. 

And they were requesting that she expressly withdraw her trademark application. 

She didn’t know what she had done wrong and was ADAMANT that she hadn’t found an exact match for the same goods and services.

Upon reviewing her case, I found she’d filed her application in the wrong class with an inaccurate description of her services.

So not only was she out the filing fees she paid to the USPTO, but she also had to pay additional fees for me to clean up the mess. 

A huge part of what I do involves empowering online business owners to handle their own legal.

And you need to do some initial legwork – like running knockout searches – before you contact an attorney.

But that’s all those free trademark searches are really good for: 

A quick initial check.

Once that’s done, you definitely want to talk to an attorney to make sure you’re not gambling with your time, money, effort, or brand.

Apply to work with Nicole Cheri Oden Law when it’s time to secure your trademarks.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

 

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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