Tag: search

  • Trademark Search Hacks

    Trademark Search Hacks

    • Updated on 2/6/2024 for the all-new Trademark Search by USPTO.

    Trademark attorneys, like myself, use USPTO’s Trademark Search like everyone else. I will walk you through the entire process with helpful tips you can use right away.

    First of all, you need to access Trademark Search (uspto.gov)

    You should see something like this:

    Now, hit the “Search by all” button on the top left, and choose “Wordmark”.

    If you know what company name (or brand) you’re looking for, you can simply type it here.

    Alternatively, it should give you a good start if you’re concerned about others using more or less same name or design as your brand.

    For example, if you search “apple”, it will show you all trademarks in the USPTO’s database that contain the word “apple” as well as any design related to the fruit “apple.”

    The above are just the first 16 trademarks out of 4,694 results that I got today.

    Narrow it down using description of goods or services

    Let’s start by saying a trademark can’t stand alone without association with a good or service. When you see a sign saying “Apple” in a grocery store, would you assume that the fruit is produced by Apple, Inc.?

    No. That’s why you should be interested only in the trademarks used in association with the goods/services related to your business.

    You can narrow your search result by typing your own description of a good or service. Just locate a new box, pre-filled with the title “Refine search by goods or services”, next to the search box you just used.

    You can, for example, search “socks” if you’re in the socks business, but that’s when you are interested in pretty ordinary items like socks.

    Alternatively, use the International Classes

    Trademark examiners are more likely to use International Classes (or ICs) than descriptions like “socks”.

    A brief introduction to the ICs. Countries around the world decided to categorize trademarks into 45 international groups or classes. International Class 1 is for chemicals; 3 is for cosmetics and cleaning preparations; and so on. There are only 45 ICs. Because it’s easy to presume that goods or services in the same category are closely related, when a trademark has a similar mark registered in the same IC, it’s an automatic red flag for trademark examiners.

    Also, you should consider related ICs. For example, meats and processed foods (IC 29) are often sold at the same place as staple foods (IC 30) and natural agricultural products (IC 31). This is covered by “coordinated” feature of the Trademark Search. More about this further down.

    First, it’s a good idea to skim through the list of ICs.

    List of ICs

    1. Chemicals
    2. Paints
    3. Cosmetics and cleaning preparations
    4. Lubricants and fuels
    5. Pharmaceuticals
    6. Metal goods
    7. Machinery
    8. Hand tools
    9. Electrical and scientific apparatus
    10. Medical apparatus
    11. Environmental control apparatus
    12. Vehicles
    13. Firearms
    14. Jewelry
    15. Musical instruments
    16. Paper goods and printed matter
    17. Rubber goods
    18. Leather goods
    19. Non-metallic building materials
    20. Furniture and articles not otherwise classified
    21. Housewares and glass
    22. Cordage and fibers
    23. Yarns and threads
    24. Fabrics
    25. Clothing
    26. Fancy goods
    27. Floor coverings
    28. Toys and sporting goods
    29. Meats and processed foods
    30. Staple foods
    31. Natural agricultural products
    32. Light beverages
    33. Wines and spirits
    34. Smokers’ articles
    35. Advertising and business
    36. Insurance and financial
    37. Building construction and repair
    38. Telecommunications
    39. Transportation and storage
    40. Treatment of materials
    41. Education and entertainment
    42. Computer and scientific
    43. Hotels and restaurants
    44. Medical, beauty and agricultural
    45. Personal and legal

    Nice Classification (wipo.int). Italics are added to indicate services.

    Incorporating ICs into your search is so easy although it’s called “Expert”. You only need to click the button “Expert” next to the search boxes.

    Now you can see the list of ICs on the left column. You only need to click on the ICs you’re interested in.

    You probably already found this, but there’s a “Coordinated” toggle above the list of ICs. When you select an IC, some ICs will be automatically selected in a lighter color, if the toggle is on. These are ICs that the USPTO deems related to the IC you selected.

    You can play with other toggles such as “Live” and “Dead” in the “Status filter” above to further narrow down the search.

    Advanced search

    Unfortunately, people don’t always use correct spellings for brand names. Sometimes, the number “0” may replace “o” in a trademark, making your search incomplete.

    Trademark Search offers you an option to use Regular Expression (Regex) instead of simply typing “Apple”, but this calls for the use of “FIELD”.

    I put FIELD in all-caps because “fields” should always be capitalized in Trademark Search. So are Boolean operators like AND and OR.

    Start with a CM FIELD.

    Combined Mark FIELD lets you search not just the words but also alternative spellings and translations.

    First, we want to find out the most distinctive and recognizable part (or parts) of your trademark. We will be calling the part(s) keyword(s).

    If your mark is “T-mobile” for telecommunication services, I would say the keyword is the letter “T”. If your mark is “NinjaBlender” for blenders, “Ninja” would be your keyword. If it’s “Saks 5th” for a retail store, it’s “Sak” and “5th”.

    For made-up words like Noorola, just pick a part that looks familiar, like “rola”.

    You should type in (or copy and past and change KEYWORD to your own keyword):

    CM:/.*KEYWORD.*/

    in the search box after changing the blue box to “Search by filed tag” as shown above.

    e.g.

    If you have more than one Keyword, you can connect them (KEYWORD_1 and KEYWORD_2) with “AND” to find only marks that have both.

    CM:/.*KEYWORD_1.*/ AND CM:/.*KEYWORD_2.*/

    e.g.

    This search pulls up all the trademarks that had been registered and applied as well as currently registered trademarks as long as they include your Keywords. Because we added the regex “.*”, if your keyword is home, the result will include Homedics. However, your search won’t include “fifth”, more about this later on.

    A good thing is that because we used the field “CM”, you will not miss a foreign equivalent of your keyword. e.g. Primera Banco for an equivalent of First Bank.

    Other fields to use.

    I personally try to go through at least hundreds of marks that are most similar. However, on many occasions, the Keyword search populates thousands or more.

    There are many ways to narrow down your search. For example, you can simply see only “live” entries, meaning applications pending examination and active registrations, by adding “AND LD:true” at the end.

    CM:/.*KEYWORD.*/ AND LD:true

    This sometimes helps, but dead applications and cancelled registrations can give you a fuller picture, so it’s not always a good way to perform your clearance search.

    In a similar way, if you want to see only “registered” marks that are live, you can use “SA:registered”.

    CM:/.*KEYWORD.*/ AND LD:true AND SA:registered

    This gives you only registered marks that are still active. If you want to search for every mark that has been registered, including currently cancelled, you can drop the middle part.

    CM:/.*KEYWORD.*/ AND SA:registered

    Incorporate ICs.

    Incorporating ICs into your search shouldn’t be hard. Just remember you should always put them in a three-digit format such as 001, 012, and so on.

    IC:THREE_DIGIT

    For example, you can search IC:001 to see all trademark applications and registrations for chemicals.

    Because we wanted to narrow our search, we should add it to the previous search with a preceding “AND”.

    CM:/.*KEYWORD.*/ AND LD:true AND SA:registered AND IC:THREE_DIGIT

    You can add more than one IC in a search.

    IC:THREE_DIGIT OR IC:THREE_DIGIT

    Note, “OR” is used here because you are interested in both of ICs separately, not just trademarks that are registered for both ICs.

    It’s important to note that if you want to use “OR” in tandem with other fields connected with “AND”, you should use parenthesis to get a correct search result.

    For example,

    CM:/.*KEYWORD.*/ AND LD:true AND (IC:THREE_DIGIT 
    OR IC:THREE_DIGIT)

    I want to remind you that you can always use the “Expert” mode, left column to choose ICs, with coordinated toggle on/off, but the above should illustrate how to perform a nested search with parentheses.

    Now, you have it.

    Before I let you go. A word of caution. The narrower your search gets, the more you will miss.

    Also, in practice, my search gets a little crazy with keywords. For example, I may use

    CM:/h[ou]n[aeiou].*/ 

    instead of

    CM:/.*honey.*/ 

    because I want to include marks like “huneyboo” in my result. FYI, the first regex will return more than double the total search results than the second regex. If you’re concerned about the alternative spellings but don’t know a thing about regex, you stick with the Wordmark search above illustrated.

    If you’re not familiar with regex but want to learn more, just look up tutorials for regular expression, which is more widely used than you think and certainly not an invention by the USPTO.

  • Amazon IP Accelerator Program

    Amazon IP Accelerator Program

    Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.

    Are the maximum service fees set by Amazon fair?

    Assuming that the law firms participating in the IPAP charge the maximum fees set by the program, we compared the service charges as below:

    As you can see, the cost savings in non-flat fee structure is significant. Nevertheless, because most Amazon sellers do not have their own lawyers who can do trademark prosecution at a competitive rate, they prefer to find one with a flat fee structure.

    Unfortunately, the flat fees set by the IPAP, or advertised online, do not tell the whole story. Even if reviewed, researched and filed by a professional, a trademark application can be still subject to an office action (“OA”) by the USPTO for various reasons. When the time comes, service providers who set their flat fees too low will try to recoup their actual cost. Note, office actions must be responded in writing however simple or trivial they might be. This really opens the door for unethical conducts by service providers.

    IPfever attorneys handle OA as it should be. If it involves a simple amendment to the identification of goods and services, the cost may be as low as $20. There are attorneys charge flat fees for OA, which do not make any sense because while some OA might require an extensive legal argument to overcome, others may be resolved with a simple email to the examiner.

    Every attorney at IPfever wants to be your long-lasting partner (not a one-time trademark application service provider), and our fee structure as well as the workflow prevent attorneys from taking advantage of clients’ unfamiliarity with the process. That explains the unbelievably low cost associated with an average case at IPfever. In fact, most trademark cases are quite straightforward.

    Request your free consultation today and talk to an attorney.

    • You can find out what you need or expect for trademark registration.
    • You can ask any general question such as if your mark can be registered or used, how much it would cost for you trademark, and so on.
    • Even if you eventually retain the attorney, anything offered during the free consultation stays free.
  • Patent Infringement: Clearance Search Explained

    Patent Infringement: Clearance Search Explained

    Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.

    Even if you invent something new, it is often based on other’s previous works.

    For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making  a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.

    You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).

    Once you identify a potentially blocking patent, the scope of the patent needs to be analyzed.

    1. Claims determine the scope.

    Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.

    2. The scope will be construed by the courts.

    What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.

    However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.

    3. Patents do expire, so you should check the dates.

    Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.

    Blocking patents bar you from not only selling but also importing.

    Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S.  Of course, the other way around is true.

    You can design around, get license, or challenge the patent’s validity.

    When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.

  • Trademark Clearance Search

    Trademark Clearance Search

    It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.

    Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.

  • How often do you Google your trademark?

    How often do you Google your trademark?

    How do you react to a sight of a retail store that just launched? Early adopters enjoy using a product or service before other people do, but most of the consumers tend to be a lot less passionate about embracing a new store although its sight might pop among aging stores.

    That is why many businesses spend fortune to run commercials on TV and place advertisements on publications to familiarize their trademarks to customers. Since an excessive amount of advertisements is pouring in through various media, most modern consumers consider the ads as something they want to avoid as much as possible.

    Accordingly, alternative marketing tactics, including internet marketing, is considered much more efficient than those traditional advertisements nowadays. In addition to running official websites and social network accounts, many businesses are employing even newer internet marketing tactics including sponsoring popular bloggers or social network accounts in an effort to expose their products and trademarks to their customers.

    These methods do not expose the trademarks to potential consumers who are involuntarily watching the commercials but make them actively seek the contents containing their trademarks. As a result, even though the content might be identical, which may be a summary of product feature, it becomes the information that was researched by themselves instead of an empty statement by the one who wants to sell products or service to them.

    In fact, many consumers utilize internet search to research the information about or the reputation of an unfamiliar business or a new product, and they typically type in a trademark for the search. If you google a trademark of a business, it is likely that the official website of the business appears on the first page of the search results, which might not be true when keywords are used for the search of the business.

    When the business has no official website, a review post by popular review sites such as Yelp and Google Maps would populate the top results. As opposed to an official website, the contents of review websites cannot be controlled by the business, so they can be easily tainted by few unfair reviews that are written by angry customers.

    Let alone an official website, even a review of the business could be missing on the first page of the search result, in which case customers might feel very suspicious about the legitimacy of the business. More often than not, it gives a bad impression to customers. If you carefully examine those instances, you find problems within the trademarks themselves.

    For example, a bad trademark may only include a name of the town or a common term used in the trade, like “Chicago”, “beauty”, and “supply”. You can easily expect that the search result for “Chicago beauty supply” would include all beauty supply stores in the region. There are other instances such as using a description of the product or service as a trademark such as “Luxury Beauty Supply”. These names will unlikely be distinguished by search engines from common keyword searches and return generic information that are not specific to the business.

    Considering the bad impression to internet savvy consumers caused by choosing an inappropriate trademark, you should determine whether your choice of words could bring about a strong trademark even before you start using it. Even if you have already started using it, you should continuously monitor whether other businesses are misappropriating your trademark or there are similar trademarks causing confusion among customers. Regular monitoring helps laying a solid foundation for your trademark.

    You can start monitoring by simply typing in your trademark in the Google search box. The result will not only reveal whether the mark you want to use can become a strong trademark in the future but also whether the trademark you are using is being misappropriated by others.

    It’s never too late. Google your trademark today!