The internet provides fast access to many things, such as books, concert tickets and movie revues. You can now even file trademark applications using the U.S. Patent & Trademark Office’s (PTO’s) web site www.uspto.gov/main/trademarks.htm. It’s easy and the site takes credit cards. You can also search trademarks for free at the same site. However, think before you click.
Before filing an application or using a mark, search it. The PTO database search is limited to federal trademark applications and registrations, and thus is best used as an initial screening tool only. The database omits all other trademark sources, including state trademark registrations, “common law” users (those who use marks but never applied for registration), and domain names. Finding relevant prior users before filing or using a mark is invaluable information for trademark selection. A small change to your mark before filing an application or selling goods could avoid serious problems later.
When searching, look for marks close in spelling, sound and sometimes meaning. Look in related goods, not just your desired goods. For example, if searching GOTCHA for hats, search all clothing, helmets and headbands. Search for variations of the mark. You may need to search for “GOT” and “CHA” separately. You would not want to miss “GOT CHA” (as two words) or even “GOT YOU.” If the word or phrase is not that common, it may be useful to search without any restriction on the goods or services.
Be ready to adjust strategy during the search. If no one is using “GOT” in clothing, you may need to search “GET.” Stopping at “GOT”, and later finding out about “GET YAH” on caps would be serious. While you could litigate “GOT CHA” versus “GET YAH”, are you sure you would win? Moreover, recalling and remarking goods and replacing signs are expensive. A good search is invaluable.
Electronically filing, like searching, gives rise to important concerns. In my next quarterly article, I will discuss factors to consider when filing a trademark application.