Key Parameters of USA Trademark Search

Key Parameters to Perform USA Trademark Search

USA Trademark Search •

There are nearly 60 million live trademarks in the world today which completely depend on comprehensive and reliable strategies to ensure full protection to your brand.

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USA trademark search involves highly specific search functions which arm you with the right information from the right databases to protect your brand and help you make cost-saving decisions.

• There are various key parameters you must consider to make your search reports look approachable and information-rich for your clients. a) Trademark Name Search b) Pseudo Mark c) Design Search Code d) Live and Dead Marks e) Proper Classifications f) Goods and Services

Trademark Name Search • •

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Trademark name search is also known as ‘clearance search’.

Trademark Name Search must be considered as the most primitive task to conduct to ensure that you are choosing a unique trademark.

Otherwise, any confusingly similar trademark can face rejection from the USPTO during its examination.

• This search forms an essential component of USA Trademark Search as it helps in listing out similar trademark names.

• You can easily conduct a name search by consulting any professional and use the following platforms to do so. a) Trademark Electronic Search System (TESS) b) Google Search, Adwords, Keyword Planner, and Alerts c) Third-party tools (software or manual search)

Pseudo Mark • • •

Pseudo Marks refer to translations, phonetic or similar sounding marks, correct spellings of deliberately misspelled things, spelled-out abbreviations, and so on.

You must ensure excluding these pseudo marks while conducting a USA Trademark Search.

Mostly, this field is not displayed and contains spellings for terms including, ‘4U’ – in a mark, for which ‘for you’ must be mentioned in pseudo mark field.

Design Search Codes

Fig: Multiple Design Element: a search for a mark with an Elephant (03.03.01) and a blanket (09.01.07).

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Design Search Code constitutes of a six-digit number that aids examiners and applicants to search the USPTO database for marks which may have similar designs. These six-digit numbers are arranged in three two-digit groups, where the first two digits signify any general type of design.

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These Codes help applicants in conducting an effective search before they file for a trademark application. Further, it also helps examiners in evaluating whether the mark belongs to any previously filed application or not. The USPTO database helps attorneys and the general public to search for marks that resembles the filed application.

• So, to ease out the process of searching through the database, each design element in a mark is given a numerical design search code. A design element refers to any element which is not a word and is only a form of depiction of any object. The numerical code helps in identifying if your mark resembles any previously filed mark in appearance, sound, or meaning.

Live and Dead Marks •

Live trademarks refer to the marks which are still in use. These marks possess the ability to block the registration of a pending application. Further, they also help in identifying and paying attention to the goods and services if the registered mark is of a particular concern. A trademark is regarded live when the trademark registration is maintained using the 6 -months grace period and meets all the requirements to remain live and being used.

A dead trademark is the one which has expired, cancelled, or abandoned. So, these marks are not helpful in blocking any pending applications. If a trademark application has never matured into a registration, you can only see an application number for it. Dead trademarks arise due to their inability to meet their deadlines for renewal or pass to overcome a refusal.

• However, in some cases, the trademark owners do not complete the process of trademark renewal and continue to use the mark.

These marks are also certified as dead marks but are still in use.

‘NICE’ Classification •

The International Classification of goods and services or NICE classification provides a system of classifying goods and services for an applicant trying to register a trademark. This system was established by the NICE Agreement in 1957as given below.

45 Classes The goods and services are grouped into 45 classes

Goods Class 01-34

Services Class 34-45

Goods and Services •

A federal trademark registration provides healthy protection to a trademark in the United States.

However, that protection will only work in cases where the identification of goods and services is done by choosing the correct class. This forms a vital part of securing an applicant’s trademark rights.

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An applicant must always consider conducting a USA Trademark Search on goods and services. Possibly, their choice of goods and services may possess a tendency to fall into other classes. However, there are only a set of specific international classes which might fit appropriately for the respective goods and services an applicant intends to obtain his trademark rights for.

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This makes them presume that they might fall into classes which are not evidently visible and are called ‘hidden classes’. Thus, this helps in catching hold of other conflicts which may include other hidden classes and helps in distinguishing your goods and services from those of your competitors.

NICE Classification of Goods and Services Classes

Goods/services

Classes

Goods/Services

Classes

Goods/Services

Class 1

Chemicals

Class 16

Stationary & Paper Goods

Class 31

Fresh Fruits & Vegetables

Class 2

Paints, Coatings

Class 17

Rubber Products

Class 32

Beer & Beverages

Class 3

Cleaning Products

Class 18

Leather Goods

Class 32

Alcoholic Beverages

Class 4

Fuels, Industrial Oils

Class 19

Building Material

Class 34

Tobacco Products

Class 5

Veterinary Products

Class 20

Furniture

Class 35

Advertising & Business Services

Class 6

Metals; Metal Coatings

Class 21

Crockery

Class 36

Insurance & Financial Services

Class 7

Machines and Machine Tools

Class 22

Ropes

Class 37

Construction & Repair Services

Class 8

Hand tools and Implements

Class 23

Yarns & Threads

Class 38

Telecommunication Services

Class 9

Computers and Scientific Devices

Class 24

Fabrics

Class 39

Shipping & Travel Services

Class 10

Surgical Instruments

Class 25

Clothing Footwear & Handbags

Class 40

Treatment of Materials Services

Class 11

Appliances

Class 26

Lace and Embroidery

Class 41

Education & Entertainment Services

Class 12

Vehicles

Class 27

Carpets

Class 42

Science & Technology Services

Class 13

Firearms

Class 28

Games & Toys

Class 43

Food Services

Class 14

Jewellery

Class 29

Meat Extracts

Class 44

Medical & veterinary Services

Class 15

Musical Instruments

Class 30

Coffee & Rice Products

Class 45

Legal & Security Services

Thank you!

For More Information, Visit

TMReady (Formerly The Trademark Search Company) Website: https://thetrademarksearchcompany.com/