TrademarkEsearch.com
Trademark E Search
Verify Way Beyond Direct Hits
Not Just Patents® Verification Explores Right to Register, Specimens, ID and Right to Use
1. Explore Right to Register-
Use good principles for exploring if someone else has already registered or applied for (LIVE marks in USPTO TESS database) something confusingly similar to your choice of trademark for related goods or related services.
USPTO (TESS Help) Likelihood of Confusion Search Principles
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.
The Thirteen DuPont Factors
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test that the USPTO trademark examiners & TTAB (Trademark Trial and Appeal Board) use for determining whether there is a likelihood of confusion between two trademarks:
In testing for likelihood of confusion . . . the following, when of record, must be considered:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-
(4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).
(10) The market interface between applicant and the owner of a prior mark. . . .
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
2. Explore Right to Register: Other Grounds
Is this a distinctive trademark? Are there any other grounds for refusal?
3. Explore Specimens of Use
Find self-
4. Explore Most Appropriate ID of goods or services-
Explore closest conflicts and other issues and determine if broad or narrow ID is appropriate
5. Explore Right to Use-
Use good principles (see above) for exploring if someone else is making common law use of your choice of trademark.
What is Verifying a Trademark and Why Verify a Trademark?
There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits. Some would expand the mechanical USPTO search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. If a trademark owner is just trying to spend little and get little, these may be enough to satisfy the “get little” goal. If a trademark owner is trying to maximize the value of their investment and minimize the weaknesses, getting help from someone experienced can matter.
“A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).
*The Most Efficient Commercial Tool Ever Devised: The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.
*The USPTO helps to enforce prior strong trademarks during the application of later-
Can I use USPTO TESS to search copyrights? No, the TESS 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-
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