Effective Trademark Searching
Goals
• Learn the purpose of doing a trademark
search.
• Review trademark search tools.
• Build a trademark search strategy.
• Understand the limitations of a search.
• Review sources for searching foreign, state
and common law marks.
What is a Trademark?
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Words
Symbols
Pictures
Sounds
Scents
Colors
Shapes
Designs
amazon.com
Nike
What Does a Trademark Do?
A trademark (or service mark) is a word, phrase,
symbol, logo, design, slogan, color, shape, scent, or
sound that:
1. Identifies a good or service in the marketplace
2. Indicates commercial or geographic origin
-Vidalia for onions grown near Vidalia, Georgia
3. Certifies standards or quality
- American Dental Association Certified for tooth
paste, tooth brushes, etc.
Trademarks In Use
Trademark
Certification Mark
Trademark*
Charlie the Tuna
(character trademark)
Kosher Symbol
Generic Recycle Symbol
Why Search Trademarks?
DETECTION
Discovering trademark problems
that could sink your investment.
1. Infringement of an existing
registered trademark.
2. Likelihood of Confusion with
an existing registered trademark.
A Tale of Two Bakeries
Bodacious Buns
Marina Del Rey, Cal.
Est. 1987
Trademark registered in 1988
Bodacious Breads
Waldoboro, Maine
Est. 1993
Applied for a trademark in 1995
Changed to Borealis Breads in 1998
Why Search Trademarks?
®
PROTECTION
Remember: it’s the owner’s
responsibility to safeguard and
enforce their trademark rights.
Defend your trademark
against infringing marks.
A periodic search of new
trademark applications will
help you identify potential
problems.
Likelihood of Confusion Test
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Sound
Appearance
Meaning
Foreign language equivalents
Similarity of goods and services
Goods can be related to services
Where/how are the goods/services sold
What’s Confusing?
Courts have objected to the following marks when used
with identical or related products:
LOSER
Seycos
Cleo Cola
S.O.
Toro Rojo
Ikon
Oral-Angle
PRODUCT
Watches
Soft Drinks
Service Stations
Malt Liquor
Camera
Tooth Brushes
WINNER
Seiko
Coca-Cola
Esso
Red Bull
Nikon
Oral-B
Kellogg vs. Exxon
Four years ago, Kellogg sued Exxon to block
the energy company from using its tiger mascot
to advertise “Tiger-Mart” snacks and food.
Keep your paws
off these flakes or
I’ll liti-GREAT!


Confusing?
Houlihan’s
Hooligans
Restaurant and bar
services.
Restaurant, bar
and lounge
services.
The Hooligans
Collectible dolls.
Confusing?
Amazon
Amazon
Chile sauce and
pepper spice.
Restaurant and bar
services.
Amazon.com
Computerized on line
ordering service
featuring the wholesale
and retail distribution of
books.
Pepperidge Farms vs. Nabisco
PF sued Nabisco to prevent it
from introducing a snack food
containing fish shaped crackers.
PF Wins!
PF wins!
The court
agreed that
Nabisco’s
cracker
was too
similar to
PF’s
goldfish
cracker.
Trademark Search Tools
• Goods & Services Manual (print, CD, Web)
• International Class Schedule (print)
• Trademark Manual of Examining Procedure Chapter 1400 (print, CD, Web)
• Design Code Manual (print, Web)
• Examination Notes (CD, Web)
• Official Gazette & Annual Index (print)
• Trademark databases (CD, Web)
• TARR - trademark status database (Web)
Other Useful Tools
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Dictionary
Thesaurus
Geographical Dictionaries & Atlases
Foreign Language Dictionaries
Synonym/Antonym Dictionary
Rhyming Dictionary
Technical Dictionaries
Trademark/Tradename Dictionaries or
Encyclopedias
Search Outline
1. Brainstorm trademark ideas. Have 5-10+ choices before you
begin searching.
2. Describe your product or service. Determine the appropriate
International Class or Classes, terms and related products or
services.
3. Describe your mark. Think of alternate spellings, sound and
visual equivalents, design codes, etc.
4. Conduct the search. Remember to search REGISTERED,
PENDING and DEAD marks.
Trademark Example
An invention that shields
cell phone users from
mutating electromagnetic
energy.
Unprotected cell phone user...
Becomes mutant.
Step 1 - Brainstorm Names
Cell Block
Cell Shield
Cell Sense
Safe Cell
Soft Cell
Sani-Cell
CanCell
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CELL
BLOCK
CELL
SHIELD
Step 2 - Identify Specific Terms
• Use the Acceptable Identification of Goods &
Services Manual (G&S Manual) to determine
the specific term or terms that describe your
product or service.
• Check for abolished terms. Trademark
registrations are not updated when terms
change or are deleted.
– Use Flying Disc instead of Flying Saucer
for toy flying discs.
Determine Class
• In the G&S Manual, note the International
Class listed with each term.
• The complete International Schedule of
Classes of Goods and Services is listed on
the back cover of the Basic Facts About
Trademarks booklet.
– Clothing is in Class 25
– Beer is in Class 32
– Transportation is in Class 41
Related Goods & Services
• Use the G&S Manual to identify related goods or
services and their classes.
• Think in broad terms. Many products sold or used
together are classed separately:
– Peanut butter is in Class 29 while marshmallow topping is in
Class 30
– The terms shoes, boots, sandals, sneakers and footwear
describe the same type of goods
– Out-of-date terms: tonic beverage for soda
– Misspellings: sirup, cofee, coffe, repellant
– British terms and spellings: aluminium (aluminum), crisps
(potato chips), lorries (trucks)
Describe the Product or Service
Product Terms & Classes
Cellular telephones
9
Digital cellular telephones
9
Cell phone accessories
9
Cell phone services
38
Step 3 - Design Codes
• Use the Design Code Manual (DCM) to
determine appropriate codes;
• The DCM is a numerical classification index
that codifies design elements into categories,
divisions and sections:
01 - Celestial bodies, natural phenomena,
geographical maps
01.01 - Stars, comets
01.01.03 - Stars with five points
Multiple Design Codes
Even simple designs often
have more than one code.
03
03.15
03.15.08 
03.15.19 
03.15.24 
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ANIMALS
Birds, bats
Storks, flamingos, heron and other waders
Birds or bats in flight or with outspread wings
Stylized birds and bats
Design Code Example
CELL
BLOCK

Shield
Lightning
24.01.01
01.15.02
Border
26.11.07
Searching Your Mark
• If your mark includes a phrase, what are the
most important keywords?
– Cheeze Louise
• Is punctuation an important element?
– @PLAY
– Smart;)Bot
• Transpositions:
– Pizza Tower = Tower of Pizza
– PizzaTower = Tower-Pizza
Broaden Your Search
• Alternative spellings and homonyms:
– Wooly Bear, Woolly Bear, Woollee Bare
• Words that have the same or similar
meanings:
– Front Row Videos = Down Front Movies
• Similar sounds or appearances:
– Granola, Granulo, Granalo
– Smile = Sm:)e
• Phonetic equivalents:
– Tennis Anyone? = 10-S-NE-1?
Step 4 - Search Databases
• TESS - Trademark Electronic Search
System
– “Live” registered trademarks and pending
applications from 1871 to the present.
– “Dead” (expired, cancelled or abandoned)
marks and applications from 1984 to the
present.
– About a week behind paper filings.
– Updated Tues-Sat 6:30 a.m.
Cassis2
Trademarks BIB
– Live U.S. trademarks from 1884 to the present
– Dead U.S. trademarks from 1983 to the present
– Updated bimonthly
USAMark
– Facsimile images of all U.S. trademark
registrations from 1871 to the present
– updated monthly
TARR
• TARR is the Trademarks Applications and
Registration Retrieval system.
• Check it for the current status of the marks
you found in your search.
• TARR is updated daily at 5 a.m. and contains
information not found on CD-ROM, the Web
or the Official Gazette.
Official Gazette
For historical trademarks not
found in electronic databases
check the Official Gazette,
which has been published
weekly since 1872; also check
annual indexes.
State & Common Law Marks
There’s no requirement to search state or
common law marks in order to apply for a
federal trademark registration. However, doing
so may save you time and money.
In 1999, Amazon Bookstore,
established in Minneapolis in the
1970s, challenged Amazon’s
trademark. The dispute was settled
out-of-court.
State & Common Law Tools
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State trademark databases
Telephone, business and manufacturing directories
Print and on-line catalogs
Trade journals and magazines
Domain name databases
Web search engines and portals
Newspapers and newsletters
Company press releases and new product
announcements