LEGAL GUIDE
Written by attorney Deepak Malhotra | Nov 15, 2010

How to Perform a Basic Trademark Search for a New Logo

A trademark can consist of a word, a logo, or both. A word mark usually provides stronger protection if it is separately capable of being registered. Logo marks are usually easier to register but provide less protection. If your trademark contains both a logo and word, you should perform separate searches for the word and the logo. The following provides guidance on how to perform a basic search for a logo. A separate legal guide describes how to search for a word mark.

Before adopting a new logo, trademark searching should be performed.

To perform an initial search, simply go to the U.S. Patent and Trademark Office's TESS web site, currently at tess2.uspto.gov. You will have to break down elements of your design and find codes for the various shapes.

The U.S. Patent and Trademark Office assigns all marks containing design figurative elements a 6-digit numerical code(s) for searching purposes. The USPTO has a design search code manual at http://tess2.uspto.gov/tmdb/dscm/index.htm. This manual indexes the categories, divisions, and sections that make up these codes. For example, a single five-pointed star would be coded in category 01 (celestial bodies, natural phenomena and geographical maps), division 01 (stars, comets) and section 03 (single star with five points), resulting in a complete design code of 01.01.03. The design search code manual also contains explanatory notes and specific guidelines that provide instructions for specific code sections, cross-reference notes that direct users to other code categories, sections and divisions, and notes describing elements that are included or excluded from a code section.

After consulting the design search code manual and writing down some design codes, put these codes in the search boxes. In the Field pull down menus, select Design Code.

If there is a result that is similar to your mark, for similar goods or services, you should probably strike that logo off the list.

The ultimate test is whether there would be a likelihood of confusion between existing marks and the mark you are considering. To determine whether there would be a likelihood of confusion, various factors should be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impressions; 2. The similarity or dissimilarity of and the nature of the goods or services as described in an application or registration in connection with which a prior mark is in use; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which buyers to whom sales are made, i.e., "impulse" vs. careful sophisticated purchasing; 5. The fame of the prior mark (sales, advertising, length of use); 6. The number and nature of similar marks in use on similar goods; 7. The nature and extent of actual confusion; 8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion; 9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); 10. The market interface between the applicant and the owner of the prior mark; 11. The extent to which applicant has a right to exclude others from use of its mark on its goods 12. The extent of possible confusion, i.e., whether de minimis or substantial; 13. Any other established fact probative to the effect of use.

When considering whether to allow the registration of a new trademark application, the U.S. Patent and Trademark Office tends to focus on only some of these factors, namely: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; 2. The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use; 3. The similarity or dissimilarity of established, likely-to-continue trade channels; 4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; 5. The number and nature of similar marks in use on similar goods; 6. A valid consent agreement between the applicant and the owner of the previously registered mark.

When performing your search, you can simply ask yourself if your mark is close to existing registered marks such that a consumer might be confused as to the source of the goods. If your quick online search does not eliminate your logo from consideration, you should then take your logo to your attorney and request a "full search."

Note that a preliminary search on TESS is limited to Federal registrations or applications recorded in the United States Patent and Trademark Office. An online TESS search gives some indication of whether or not it is advisable to use a mark or file a federal trademark application. However, there are many trademark users who have common law rights in marks that are not registered in the U.S. Patent and Trademark Office. This is particularly true where a mark is used only in a limited geographical location. Owners of such common law marks can prevent later users from using a confusingly similar mark in the same geographical location, even though their mark has not been federally registered.

Thus, a full search should be performed after performing an online search to knock out some clearly poor choices.

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