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No trademark search, even those performed by professionals, can be considered
comprehensive. Since trademarks depend on first use and registration of common
law trademarks is not required, the completeness of any search result is
uncertain.
This guide is not comprehensive but a suggested
listed of search tools. At the very least, all trademark searches must include
a search of the Federal Registrations (CASSIS2 or TESS).
Likelihood of confusion is one of the main reasons a trademark is rejected
for registration or involved in litigation. Searching must include more than
the exact spelling of the mark to determine potential confusion. A trademark
search should address the following word variants:
- Misspellings (e.g. kwik, nite)
- Synonyms, or words whose meaning are similar (e.g. horse & pony)
- Homophones, or words that sound alike (e.g. write & right)
- Homonyms, or words that are spelled the same but mean different things
(e.g. a hide is an animal skin and to hide is to keep out of sight)
- Words that describe a graphic in another trademark (e.g. swoosh for
athletic shoes)
- British spellings (e.g. grey, colour, centre, tyre)
Federal Trademarks (®)
CASSIS2
A powerful database available at all Patent and
Trademark Depository Libraries, CASSIS2 allows simple and complex searching.
Search results can be reformatted and exported. Federal registrations often
include terms disclaimed as being generic.
TESS (http://www.uspto.gov)
TESS is the Web version of the trademark
database. TESS does not include as many dead trademarks as CASSIS and has fewer
search options but it is searchable from home any hour of the day.
Shepard's United States Intellectual Property Law
Citations
This publication lists trademarks that have been
involved in litigation. It can help determine the strength of a mark and also
the owner's willingness to defend it in court.
State Trademarks (TM)
Individual state databases (http://statetm.tripod.com/)
Wyoming Secretary of State Corporations Database (http://soswy.state.wy.us/Corp_Search_Main.asp)
Common Law Trademarks (TM)
Dictionaries
Search common dictionaries to identify generic
terms.
Specialized Dictionaries
Dictionaries specific to a subject, like
Dictionary of Food Ingredients or Hawley's Condensed Chemical
Dictionary, can identify generic terms within an industry.
Foreign Language Dictionaries
English language equivalents are considered when
determining confusion. For example, use of the term "Sol" would be considered
the same as if you were using "Sun".
You also want to avoid a term in English that
translates into a negative meaning in another language, especially if you plan
to export your product.
Atlases and Geographic Dictionaries
Geographical Indicators have recently become
regulated as intellectual property around the world. GIs are associated with
the reputation or characteristics of a region. Example GIs are Idaho potatoes
and Roquefort cheese. Search atlases and geographic dictionaries to avoid using
geographic terms that may mislead consumers about the origin of the
product.
Product and Company Directories
Telephone Directories (including a White Pages search for surnames)
Internet Search Engines
News Databases
Domain Name Registrars
International Trademarks
Given the global nature of business and the importance of the Internet, you
may want to consider searching international trademark databases for conflicts.
Some example databases:
Karen Kitchens
Wyoming State Library
ptdl@state.wy.us
307-777-7281
No information in this handout should be construed as legal
advice. Librarians at the Wyoming State Library can assist with the use of
legal search tools and factual information but cannot offer legal opinions or
interpretations of law. Consult an intellectual property attorney for legal
assistance.
9/2002
Created by Statewide Information Services, Wyoming State
Library
Last updated September 2004.
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