How to File a Trademark – Part 3

By Drew Stevens - October 9, 2018 - Technology & IP

We’re up to part three in our quest to demystify the trademark application process and removing some of the confusion associated with key parts of filing for a trademark. In this post, we’ll cover one of the areas where intellectual property lawyers in Columbus, Ohio devote most of their time in filing a trademark – the clearance search.

What is a clearance/conflict/knockout/infringement search?

Columbus Intellectual property law firms will refer to this part of the process in a variety of ways, from clearance to knockout to conflicts to preliminary searches. The bottom line is that this stage is some of the most important research you’ll do with your trademark. The importance of taking your time with this step cannot be emphasized enough. Attempting to do a cursory search in 15 minutes may save you some time, but you may end up missing a key registration or pending application that could result in an onerous office action or a Section 2(d) refusal. If this is your first time filing a trademark, plan on spending at least a few hours with this step.

The basic point of this search is to see if there are any trademarks that have been already registered or if there are any pending applications that were filed before you that are similar to your proposed mark. They key here is to avoid filing a mark that may be deemed “substantially similar” to another mark or filing a mark that has the potential to create “consumer confusion” in the marketplace.

Searching with TESS

The U.S Patent and Trademark Office loves its acronyms, and one of the more prominent of these is TESS – the Trademark Electronic Search System. Used properly, TESS can save you lots of time and heartache.

TESS offers the following search options:

  • Basic Word Mark Search (New User)
  • Word and/or Design Mark Search (Structured)
  • Word and/or Design Mark Search (Free Form)

If you’re just starting out and want to quickly assess potential conflicts with your trademark application, the Basic Word Mark Search is a great place to start. Be forewarned, this generally works best for searching for fanciful marks and made-up words. Generic or popular words or phrases may take more time. For example, if you search “Apple” with the basic search, you’ll get over 4,000 results.

We recommend you don’t read 4,000 trademark applications. To save yourself some time, try the other search options. If you do have a more generic or widely used word or phrase, start with the Word and/or Design Mark Search. If you search “Apple” AND international class 009, you’ll narrow your results down to 2,000+ entries. If you go further and do a basic index search for “Apple” and international class 009, you’ll narrow your results even further, to a more digestible 200+ entries.

Interpreting your Trademark Search Results

When you perform your search, the first two columns you’ll see are serial numbers and registration numbers. If there is a registration number, this generally means that the trademark application has been approved and the mark has been registered. If the column for registration numbers is blank, this could mean a number of things.

For the blank registration number entries, click on the application. Here, you may be able to find more information and ascertain what the status of the application is. Start with checking the filing date. If the filing date is fairly recent, the application may be working its way through the approval process. You may also see that the mark has been abandoned for one or more of its application classes (if the applicant filed for multiple classes).

Either way, you’ll next want the TSDR – the Trademark Status and Document Retrieval. By looking at the “Status” tab and the “Documents” tab, which will show office actions and responses from both the USPTO examining attorney and the intellectual property attorney (attorney of record). By reviewing these two tabs, and the documents, you should be able to get a decent idea of what the issues are with the application and its likelihood of approval.

Properly running and analyzing trademark clearance searches can be extremely time consuming and difficult. If you think you’re having trouble, give one of our Columbus intellectual property law attorneys a call.

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