FAQ Trademark Searching

Frequently Asked Questions: USPTO Trademark Public Search System

Where can I search for registered and pending USPTO trademarks that are similar to the trademark that I want to register and for related goods or services to what I want to register?

The Trademark Public Search System (https://beta-tmsearch.uspto.gov/) is for searching all pending and registered  USPTO Trademarks and viewing trademark images.  A good tool for doing trademark clearance searches.

DEFINITION: CLEARANCE SEARCH

The USPTO defines a clearance search as: “a search completed before you file your application to check if your chosen mark is available for use and registration. Do a clearance search to find trademarks that could keep your mark from registering or pose legal obstacles to use of your mark due to a likelihood of confusion.”

DEFINITION: LIKELIHOOD OF CONFUSION

The USPTO defines “likelihood of confusion-- a statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP §1207 et seq.) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pendingbefore the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.”

DEFINITION: RELATED PRODUCTS OR RELATED GOODS

[T]he dictionary definition of a "product line" is "a group of related products marketed by the same company. Grumpy Cat Ltd. v. Grenade Bev. LLC, No. SA CV 15-2063-DOC (DFMx), 2017 U.S. Dist. LEXIS 222401, at *20 (C.D. Cal. Dec. 1, 2017).

In dictionaries, "line" is defined as "a stock of commercial goods of the same general class but having a range of styles, sizes, prices, or quality." Definition of "Line," No. 28, http://dictionary.reference.com/ browse/line?s=t. "Line" is also defined more generally as, "[i]n manufacturing, a series of closely related products." Black's Law Dictionary, Definition of "Line," No. 3 (9th ed. 2009);  [*12] see also Merriam-Webster, Definition of "Line," No. 11, www.m-w.com/dictionary/line (defining "line" as "merchandise or services of the same general class for sale or regularly available"); Oxford Dictionary, Definition of "Line," No. 4.6, www.oxforddictionaries.com/us/definition/american_ english/line?q=line (defining "line" as a "range of commercial goods"). Holley Performance Prods. v. Specialty Auto Parts U.S.A., Inc., No. 1:00-CV-00186-M, 2014 U.S. Dist. LEXIS 65351, at *11-12 (W.D. Ky. May 12, 2014).

The definition of related goods is that they are those products that would be reasonably thought by the buying public to come from the same source if sold under the same mark. Charles Schwab & Co. v. Hibernia Bank, 665 F. Supp. 800, 802 (N.D. Cal. 1987).

FACTORS TO ANALYZE THE RELATEDNESS OF GOODS:

• the nature and characteristics of the goods;
• the degree of commercial relationship between the products;
• the origin of the goods;
• the purpose of the goods;
• whether the goods are usually produced by one and the same manufacturer;
• whether the goods are distributed by the same wholesaler;
• whether the goods are sold in the same stores, over the same counter, during the same season and to the same class or classes of customer;
• whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

Various  alcoholic  beverages  have  been  shown, based on the records for these cases,  to  be  related goods for purposes of likelihood of confusion. See In re Chatom Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (holding GASPAR’S ALE for beer and ale  likely  to  be  confused  with  JOSE  GASPAR  GOLD  for  tequila);  In  re  Majestic  Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) (holding RED BULL for tequila likely to be confused with RED BULL for malt liquor); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261 (TTAB 2011) (holding HB for wine likely to be confused with HB and design for beer); Somerset Distilling, Inc. v. Speymalt Whiskey Distribs. Ltd., 14 USPQ2d 1539 (TTAB 1989) (holding JAS. GORDON and design for scotch whiskey likely to be confused with GORDON’S for distilled gin and vodka); Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069 (TTAB 1989) (holding BRAS D’OR for brandy likely  to  be  confused  with  BRADOR  for  beer);  Bureau  Nat’l  Interprofessionnel  Du  Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (holding trademark COLAGNAC  for  cola  flavored  liqueur  likely  to  be  confused  with  certification  mark  COGNAC for brandy).

DEFINITION: RELATED SERVICES

Related services are services that are related to each other in the marketplace. Whether services are related is determined by considering the commercial relationship between the goods and/or services identified in the trademark application with those identified in an application, registration or in examples of how the other trademarks are used.  To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  Goods are services are related if the consuming public may perceive one party’s goods or services as related enough to another party’s goods or services cause confusion about the source or origin of the goods and services.  

Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed services are of a type which may emanate from a single source.  See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

FACTORS TO ANALYZE THE RELATEDNESS OF SERVICES:

• the nature and characteristic of the services;
• the origin of the services;
• the purpose of the services;
• whether the services are usually provided by one and the same business or person;
• whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and,
• whether the services are regarded as the same by those who provide them.

What is in a USPTO Trademark Search? The USPTO Trademark Public Search System contains the records of active (LIVE) and inactive (DEAD) trademark registrations and applications for both the Principal Register and the Supplemental Register. Active or LIVE marks may be used by a USPTO Examining Attorney assigned to examine a trademark application to determine that a "likelihood of confusion" exists and refuse registration.

Note: Inactive or DEAD marks may still be in use by the original applicants who may have not registered or renewed their marks or the marks may be abandoned.

Whether or not a likelihood of confusion exists is dependent on the goods/services identifications. A good search of marks and similar marks followed by a good strategic identification of goods/services may avoid a likelihood of confusion refusal. Direct hit or dead-on searching may give false assurances as to trademark clearance.

What is NOT in a USPTO Trademark Search?  Common Law Trademarks such as state business name registrations or state trademarks are not in the USPTO database. Some trademark owners with valid and protected trademark rights (common law rights acquired by use) do not choose to register their marks with the USPTO, so those marks will not be found in a USPTO search.  However, you should still consider these other marks when adopting a mark for your goods and/or services.  If a trademark is being used in the United States, the owner may have legally protected rights that are not the result of the USPTO registration process.  

See more information at Trademark E Search.

Why should I perform a trademark search? One purpose of a trademark clearance search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.  Note that the identical mark could possibly be registered to different parties if the goods and/or services are in no way related, e.g., for computer software in IC 9 and soft drinks in IC 32.  

Note: The USPTO does not refund your application fee if registration of your mark is refused. Many product launches run into severe problems when trademarks are refused for likelihood of confusion, mere descriptiveness or for other reasons. Gambling on results may not be a great strategy. Commercial strength and the ability to do well on a search engine search are vital aspects of a trademark strength.

Will my mark register if I do not find anything in the USPTO database? No, not necessarily. USPTO trademark examiners (attorneys) make decisions on whether marks may be registered on more than just a lack of “likelihood of confusion.” After you file your application, the USPTO will conduct its own search and other review, and might refuse your mark, based on several different possible grounds for refusal.  Once you submit your application, the USPTO will not cancel the filing or refund your fee, unless the application fails to satisfy minimum filing requirements.  

Filing an application does not guarantee registration and registration does not guarantee safety from lawsuits or other legal proceedings since a USPTO registration is only based on conflicts with other USPTO marks not with conflicts with common law marks. Statistically few trademarks are canceled each year and the number of cancellation proceedings on registered marks is quite low.

How should I search? The following are search principles that USPTO examiners use when searching to see if new applications will have a likelihood of confusion with already pending or registered marks. Note that this search method goes well beyond direct hit searching. Note that searching just the USPTO database for trademarks will not reveal if there are unregistered trademark owners using any particular mark who may oppose your trademark application after it is published for opposition. The search principles below rely on knowledge of the underlying meanings of ‘terms of art’ such as “distinctive element”, “phonetic equivalent”, and “legal equivalent.”

What are PSEUDO MARKS (LITERAL or PHONETIC EQUIVALENTS)

The USPTO has a pseudo-mark field in its search system to improve the accuracy of searches in its electronic databases (even though the USPTO has no statutory obligation that compels the maintenance of this feature). This pseudo-mark field shows the literal equivalent of a pictorial representation of wording in a design mark, and/or spellings that are similar or phonetically equivalent to wording in a word mark. The database contains text and images of marks in registrations and pending applications, including abandoned, canceled and expired records.

The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for conflicting marks. Pseudo marks have no legal significance and will not appear on the registration certificate. The pseudo mark field in the USPTO data base serves a purely administrative purpose to facilitate searching generally. It is in no way probative of how the relevant public would perceive a mark.

The pseudo-mark entries in the USPTO databases allow likelihood of confusion searches for a particular word  or term to automatically retrieve phonetic equivalents or pictorial equivalents that have been appropriately pseudo-marked.

A pseudo mark may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings. Pseudo-marks provide an additional search tool for locating marks that contain an intentionally-altered spelling of a normal English word or that contain the literal equivalent to a pictorial representation of the word in a design mark.

For example, if the mark comprises the words 'YOU ARE' surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark as 'YOU ARE SQUARE'. A mark filed as 'URGR8' would receive a pseudo mark of 'YOU ARE GREAT'.

Other examples: the pseudo mark for http://LaserJet.com is LASER JET; the pseudo mark for http://MarylandUniversity.edu is MARYLAND UNIVERSITY; and the pseudo mark for http://SmithLaw.net is SMITH LAW.

WHAT IS THE PROBLEM WITH PSEUDO MARKS? WHY ARE PSEUDO MARKS AN ISSUE FOR TRADEMARKS?

Pseudo marks cannot be used to get around the finding that the terms used are merely descriptive or are conflicting marks. A novel spelling of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic equivalent spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j).

Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv). Slight differences in sound do not overcome overall similarity between marks, as slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).

TMEP 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents

Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no “correct” pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there is no correct pronunciation of a trademark” and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Ass’n, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).

What are good Trademark Search Principles for similarity of trademarks?

(From the USPTO at http://tess2.uspto.gov/webaka/html/help.htm#FreqAske)

Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.

1.     Conduct a Thorough Search.
2.     Search All Forms of all the Distinctive Elements of the Mark.
3.     Search Each Distinctive Element Alone.
4.     Search Acronyms AND What They Stand For.
5.     Search All the Legal Word Equivalents of Terms.
6.     Search Component Parts of Individual Terms When Necessary.
7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
9.     Search all Phonetic Equivalents
10.     Search all English Equivalents

Trademark Application Checklist

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  

Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.

3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification appropriate to distinguish the trademark from a similar trademark with different goods or services?  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Email  W@TMK.law.

Copyrights

Can I use  USPTO database to search copyrights? No, the trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First. Note that works registered prior to 1978 may be found only in the Copyright Public Records Reading Room  (lm-404) on the fourth floor of the James Madison Memorial Building of the Library of Congress.

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