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How to do a Trademark Search and Why

Posted by Tulip Mahaseth on Wednesday, Sep 23, 2020

trademark-1

Red Points examines how to do a trademark search and why carrying out a trademark search is essential for a successful brand protection strategy. 

Summary

  • How to do a trademark search globally using resources such as WIPO Global Brand Database and Madrid Monitor, or nationally using TESS (Trademark Electronic Search System) for the United States,or eSearch plus for the EU.
  • A trademark search informs brand owners about whether they have the freedom to use their intended mark, or if a similar mark is already in use and registered by another.
  • Carrying out a trademark search allows brand owners to assess their chances of being able to register a mark and modify their trademark prosecution and brand strategy accordingly. 
  • Doing a trademark search prior to using a mark commercially is essential for developing a successful brand strategy and can save brand owners valuable time and money in the long run. 

The objective of this article is to provide an overview of why it is in the brand owners’ best interests to do a trademark search prior to using a mark commercially and how to do a trademark search in the United States, European Union (EU) or internationally in countries such as China, South Korea, Japan etc.

Why a Trademark Search is Essential for a Successful Brand Strategy

A trademark is any word or symbol or a combination of both used by a brand owner to identify and distinguish its products or services in the marketplace. Consumers associate products or services bearing a trademark with a specific source or brand, and therefore, expect all products or services bearing the trademark to be of similar quality. 

Trademarks are crucial to branding because they symbolize the brand owners’ business goodwill and loyalty among consumers. Given the importance of trademarks in brand building, it is paramount that prior to commercially using a mark, brand owners at least carry out a search for registered marks and trademark applications that are similar or identical to the marks they intend to use for their products or services. Doing such a trademark search would allow brand owners to identify whether any other party has registered a similar or identical mark that could prevent them from commercially using it on their products or services. 

Moreover, by performing the trademark search prior to commercially using the intended mark, brand owners have the option to modify and optimize their branding strategy before they invest significant time and resources in the mark. In addition, by carrying out a trademark search brand owners can also evaluate whether their mark is a weak mark (e.g., when the search results indicate that several similar marks are registered for similar products or services) or a strong one (e.g., when the search results show that no similar mark applications are found in the databases), and their chances of obtaining registration for such a mark. Depending on the trademark search results, the brand owners can modify their marks to make them stronger and ensure that their trademark applications result in quicker allowances. 

How to do a Trademark Search Internationally: WIPO Global Brand Database and Madrid Monitor

For performing a wide international trademark search for similar or identical trademark applications and registrations in several different countries at once, the WIPO (World Intellectual Property Organization) Global Brand Database is a valuable resource. The WIPO Global Brand Database is an extensive search database of ~42,480,000 records from ~55 national and international collections (including United States, EU, China, South Korea, Japan etc.). 

The search interface allows searching and filtering results using various criteria such as word marks or images, mark holder name, dates of mark registration, application or expiration, mark application or publication number, countries in which the mark originated, has been registered or is pending registration and classification of the mark (Vienna or Nice). Therefore, if a brand owner is interested in doing a trademark search in United States, EU or China, they can just limit their trademark search to those particular countries or regions. 

The searches can be performed using standard Boolean operators (AND, OR, NOT), and the search options include searching for exact matches to the mark (Normal), searching for marks that would sound similar (Phonetic) and searching for marks that are spelled similarly to the mark of interest (Fuzzy). 

The Madrid Monitor can be used to search for all international marks recorded under WIPO's Madrid Protocol in up to 122 member countries (including United States, EU, China, South Korea, Japan etc.) Similar to the WIPO Global Brand Database, the Madrid Monitor search interface allows searching and filtering results using word marks or images, mark holder name, countries in which the mark originated, has been registered or is pending registration, Boolean operators etc. 

In addition, the Madrid Monitor also allows brand owners to search the WIPO Gazette of International Marks for similar or identical marks and the option to receive e-alerts in real time whenever any changes are made to said international applications or registrations.

How to do a Trademark Search in the United States or in the EU

Besides using global databases such as the WIPO Global Brand Database and the Madrid Monitor to do a trademark search, brand owners can also use national databases to search for any similar or identical trademark applications and registrations. 

To search for trademark applications and registrations in the United States, brand owners can use the United States Patent and Trademark Office's (USPTO’s) TESS (Trademark Electronic Search System). TESS allows searching for similar or identical mark applications and registrations in the United States’ Federal Register using words for word marks or a description of the image or design code for design marks, mark holder name, date of application or registration, classification, Boolean operators, phonetic searching (by using ‘?’ after the search term) etc. 

Brand owners should note that because United States has a first-to-use trademark system rather than the more prevalent first-to-file trademark system (e.g., in the EU, China etc.), it may also be important to search for any similar or identical unregistered marks to assess whether any other party has geographically limited exclusive rights to using the similar or identical unregistered mark in commerce. Such searches for similar or identical unregistered marks and marks that are only registered in certain states but not nationally in the Federal Register are offered by several private search vendors in the United States. 

To search for trademark applications and registrations in the EU, brand owners can use the European Union Intellectual Property Office’s (EUIPO’s) eSearch plus. The eSearch plus interface allows searching and filtering results using word marks or images, mark holder name, date of application or registration, Boolean operators, classification etc. The search options include searching for exact matches, phonetically similar marks and marks that are spelled similarly. In addition, brand owners can sign up to receive e-alerts in real time whenever any changes are made to the applications or registrations of similar or identical EU marks identified in their trademark search. 

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About the author

Tulip Mahaseth

Post Written by Tulip Mahaseth

Tulip Mahaseth, PhD, is a legal content contributor for Red Points. She is the Intellectual Property (IP) Counsel at Synthego Corporation. Tulip practices IP counseling in the life sciences field. Her practice areas span patent application drafting and prosecution, patent landscape analysis, patentability opinions, non-infringement opinions, freedom-to-operate analysis, trademark counseling and trade secrets cataloging and counseling. Prior to joining Synthego, she practiced patent prosecution and counseling as an attorney at Bozicevic Field & Francis LLP and Foley & Lardner LLP, Palo Alto. Tulip is admitted to practice before the State Bar of California and the United States Patent and Trademark Office. Tulip received her JD, cum laude, from Northwestern University School of Law, where she was a George L. Quilici Scholar and Foley & Lardner Diversity Fellow. Tulip holds an M.S. and a Ph.D. in Microbiology from University of Illinois at Urbana-Champaign. She received her integrated M.S. in Biological Sciences with First Division honors from Birla Institute of Technology and Sciences, Pilani.