Patenting for Inventors Ep.138 - How to Search the New Trademark Search Website

Illustration by @max_gps

Patenting for Inventors Ep.138

The United States Patent and Trademark Office (USPTO) recently revamped its trademark search website. Learn all about the new features and how to determine whether the mark you want to use will cause you any issues in the latest episode of the "Patenting for Inventors" podcast!

Podcast Transcript:

Speaker 1:

You are listening to the Patenting for Inventors podcast, part of the Look Legal Pods from the law firm of Nolan Heimann, the number one source for your intellectual property, business, and entertainment law needs.

Now here's your host, registered patent attorney, Adam Diament.

Adam Diament:

Hello and welcome to the Patenting For Inventors Podcast, Episode 138, How To Use the New Government Trademark Search Website.

My name is Adam Diament, a registered patent attorney and partner at the law firm of Nolan Heimann in Los Angeles, California.

If you are a regular follower of my podcast, you may have noticed that it's been a long time since there's been an episode.

I joined Nolan Heimann in 2023 so that I could provide some more services for my clients, such as business transactions, litigation, entertainment law, and other things that I didn't do when I was on my own. And previously, I had to tell some clients that they had to hire some other law firms to do certain things for them, but now we can do a lot of things that you need within our firm. So reach out to us if you have any legal questions.

A few episodes ago, I talked about how the government made a new website for searching patents called Patent Center, and in this episode I'm going to talk about another relatively recent change, which is the new trademark search website from the government. Now, as you may know, trademarks are different from patents, but as an inventor, you should have a holistic view of your entrepreneurship, and trademarks are a part of that. You should not only know how to protect your product's physical features, but also how to protect your product's name.

Since I started the podcast back in 2017, a lot of things have changed in web searching, ChatGPT and other AI services didn't exist. So there are so many more things you could do now than you could in 2017.

In this episode, I'm going to cover the new government search tool for searching trademarks. The government retired its old system called TESS, and that stood for the Trademark Electronic Search System, and it was kind of clunky. In order to know how to use it well, you had to put in specific characters like brackets, and asterisks, and question marks, and things like that, and nobody likes doing that. Everyone just likes the way that Google works where you can type in something, and it doesn't matter if they're typos or not, Google will probably find it.

Now, you can still use the complicated syntax search method, where you put in very specific searches, but you don't have to do that in order to do a better first run at a trademark search.

Now, websites change, but as of now, if you go to the website, uspto.gov/trademarks/search, that will bring you to the page. There are a couple links, and you can register for seminars on how to do complicated searches. You can watch a couple trademark searching videos, but there's a large green button that says "Trademark Search System". Click that button and you'll get to the search page, and just put in the mark that you want.

I'm going to show you a couple examples. Let's say that you wanted to start your own basketball team, and you wanted to call them the Los Angeles Lakers. Put that in, and you'll see lots of logos and word marks for Los Angeles Lakers. So don't even bother coming to me wanting to register Los Angeles Lakers.

At least do a quick search so you already know what's easy to avoid. When you do a search, you'll see on the left side a status filter and you can select live marks, which include registered marks and pending marks, and there's also dead marks, which include canceled and abandoned marks.

So a pending mark is a mark that's not officially registered, but it's been applied for and it's just kind of working itself through the system.

The filter can be useful if you only want to see what's actually registered, versus what's been applied for but never got registered or got canceled. It says, "For live search registered marks, there are 2,921 registered marks that are listed in your search." Now, that does not mean that there are actually 2,921 marks for Los Angeles Lakers, because it will not only search the marks but the owners. So if Los Angeles Lakers Incorporated owns a mark, those will come up too.

If you scroll down a little bit, you'll see that they still actually have the mark for Minneapolis Lakers registered. They also have the mark Laker Girls. So this search is useful if you want to know what mark a company owns. For some reason, some marks come up that don't even have the word a "Lakers" in it like "Hope for Los Angeles". I don't see "Lakers" anywhere in there, so it's going to be over-inclusive. It's probably looking for any word that you typed in such as "Los Angeles", because if you put in the entirety of your search and quotes where you put in "Los Angeles Lakers" in quotes, then it only lists 38 results. And all of those have the entirety of the phrase "Los Angeles Lakers" in the mark or the owner.

Now, if you look next to your search on the right, you'll see something that says "Refine by goods and services." You can put in what you want your mark to be used for. So if you want to know what marks are "Los Angeles Lakers" and "basketball", you can type the word "basketball" in there and you'll see 24 results.

Now, maybe you're wondering, "Why don't all 38 'Los Angeles Lakers' marks have basketball listed as a good or service?" Well, it's probably because not every mark they have registered specifically lists basketball as what they want in the mark for. They may have the mark "Los Angeles Lakers" for shirts and pants that didn't list basketball in there.

The reason why it's useful to refine by goods or services is because whether you can get a mark depends mostly on two factors, how similar the names are, and how similar the goods and services are.

For example, there's a Delta Air Lines and Delta Faucets. Let's say you were the faucet company and you wanted to name yourself Delta Faucets. So you do trademark search and see there's already a Delta Air Lines for that, so you just give up and rebrand yourself. Well, not so fast, just because there's Delta for airlines doesn't mean you can't have Delta for faucets. It all comes down to consumer confusion, which I talked about in a previous episode. Whether or not something would be confusingly similar can be tough to figure out, which is why I recommend you go to an attorney, such as myself, for a professional search and opinion where we use other databases and other analysis tools to figure out if your mark will likely get rejected based what's out there.

Using the free trademark office website for searches is a good start, but you still do need to know how to do a proper search. If you watched the movie Coming to America, I remember how there was McDowell's Restaurants that was a knockoff of McDonald's. If you go to the government search page and put in McDowell's and then refine by restaurants, McDonald's does not come up. So there's other things do come up. There's Magdala, two Magdalenas, two McDeliveries. So you might think, "Okay, well McDonald's doesn't show up. I'm good to use it." Well, I would advise you otherwise, even if the trademark search didn't list McDonald's. Another reason to use an attorney for a trademark search and opinion before you try to register a mark.

Now you can do more complicated searches in expert mode on the government trademark search website. We can filter by class number, put in code letters for owner's name and mark name or design codes, and putting in Boolean and logical operators like "and", and "or", and "not", and proximity searches, and translations of marks, and things called pseudo marks. All that kind of stuff takes time to learn, and you can do that, or you can cut out all the time, let an attorney do it for you.

Now, an attorney isn't going to be able to give you an answer of 100% this is going to go through, because the attorney isn't the examiner, and every examiner has their own thoughts on whether a mark should be able to be registered. But at least an attorney should be able to give you a general understanding of the likelihood of registration, and give you a risk assessment of high, medium, or low risk for trying to register a mark.

So I would say as a first step, run your mark through the government trademark search website. Eliminate thinking of, "Okay, I'm going to try to register this mark," where it's clearly obvious you're not going to get the mark. Then come to me with your proposed mark and have a more comprehensive search and opinion conducted. Once the attorney says that there's a low risk of a problem, then we can apply for that mark. Or if you're okay trying to register a mark where the attorney says that there's a medium or high risk that the mark won't go through, but you still want to try it, that's fine too, but at least you know what you're getting into and whether it will be an uphill battle or not.

Our law firm has more advanced tools than the free government trademark search websites, so our search is going to be better than yours. And with our experience, we can tell you whether similar marks to yours will likely cause problems in you getting your registration or not.

Thanks for listening, and as I always end my shows, keep on inventing.

Speaker 1:

Thanks for listening to the Patenting for Inventors podcast.

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The contents of this podcast are intended for general informational purposes only. The facts of every legal matter are unique and the content of this podcast should not be construed as offering legal advice for your specific legal situation.

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