INTRO TO TRADEMARK KNOCK-OUT SEARCHING
Background. Broadly speaking, there are two kinds of trademark searches: a “knock-out” search and a full clearance search. Whereas a “knock-out” is intended to determine whether any obvious impediments exist regarding the proposed mark, a full search is more comprehensive and is geared towards possible clearance for actual use and registration. Your assignment is to do a “knock-out” search on a fictional trademark. You will invent a trademark and document a “knock-out” search on the mark using real-world search tools. For background guidance on trademark searching, see Tamar Niv Bessinger, Ethics Issues in Searching Trademarks and Offering Opinions.
First: invent a trademark. Get together with one or more partners. At least one of you must have a laptop. Invent a trademark. Select goods and/or services for the mark. To keep your searching manageable, the mark must be a typed (i.e., word) mark and not a stylized mark or design. Because the purpose of the assignment is to consider potential conflicts, do not select a mark that will easily pass the knock-out search (such as XZZMQ@17 or ZRGGHAXLY). But try not to pick a mark that is obviously generic or extremely descriptive either. Use your best sense and try to come up with something that seems trademark-y.
Second: conduct “knock-out” searching. Use the search tools available through the Trademark Office website (http://www.uspto.gov). Go do several variants of a TESS search. Go to uspto.gov, click on trademarks, and click on TESS (or just click here). Then:
- Do a Basic Word Mark Search. Click the first link on the page for “Basic Word Mark Search.” Type your full mark into the search field and search. Too many hits? Then try putting your mark in quotation marks. Too few hits? Try searching the most important portions of your mark. Be creative.
- Then try a more advanced search. Go back to the main TESS page and do a Word and/or Design Mark Search (Structured) search (the second link). Then:
- Put your goods in one box (and select goods & services from the drop-down menu).
- Select AND as the logical connector.
- Put your mark (or the most important portion of your mark) in the second search box (and select basic index in the drop-down menu).
- What did you find? Same mark for same goods/services? Similar marks for same goods/services? Same mark for different goods/services? Were they live registrations? Pending applications? Cancelled or abandoned registrations or applications? Even abandoned or cancelled apps/registrations can be a danger because trademarks do not have to be registered.
Third: share. After you’ve searched for a bit, we’ll share our results with the group, and I’ll demonstrate ways to refine your searching. The purpose here is not to develop instant searching expertise (there is much more to searching than this brief exercise can cover), but rather to give you a sense for how the skill of searching intersects with the doctrine of trademark law.
Posted June 14, 2015