C. How to Do Your Own Trademark Search on the Internet

Searching for registered or pending trademarks on your own by using the PTO's online trademark database is easy. A typical search takes only about 15 minutes. You can make best use of your time by downloading the PTO's help file and studying it before starting your search.
This search allows you to compare your proposed domain name with registered trademarks and trademarks that are pending registration with the PTO. The results you come up with will include a list of the trademarks that meet your search parameters, and the names, addresses and contact information for the owners of those trademarks. You'll also learn how the trademark is being used (on what products or for what services) and what "international class" (category of goods or services) the mark has been assigned to by the trademark owner or applicant. This information is key in deciding whether you can go ahead and use the name without creating the likelihood of customer confusion. (See Chapter 7 for more on the international trademark classification scheme and why it matters in cases of apparent conflict.)
Meet Tess
As we were shipping this book to the printer, a new search system, called TESS (Trademark Electronic Search System) appeared on the PTO's trademark website, right below the now "older" system described in this chapter. The PTO plans to maintain both search systems for the immediate future, and the older system should continue to be sufficient for your needs.
Still, you may want to give TESS a try. It offers several features that aren't available on the older system:
•The "browse dictionary" option allows you to enter the name you are searching and see all the marks that appear before or after that name in the PTO's alphabetical list of trademark files.
•The Structured Form Search, while similar to the Boolean serach described in this chapter, provides a larger number of options for structuring your search request. For example, in TESS you can search for two terms that are near each other or right next to each other. In the older system, you are limited to searching for terms that are located in the part of the trademark record you are searching.
•TESS not only reports marks that are registered or pending, but also marks that are, as TESS puts it, dead. A mark is considered dead if its registration was cancelled by PTO or abandoned by the applicant.
Tess if the system that the PTO trademark examiners ues. It is both powerful and flexible, and you may become confused if you aren't up to speed. You will do well to stick close to the online help as you search.
CautionBefore you launch, get an in-depth search. The step-by-step instructions in this chapter are limited to how to do a free search on the Web for registered and unregistered trademarks likely to conflict with your proposed domain name. For most people this level of search is just fine as a first step, but this chapter doesn't pretend to teach you the many tricks of the trade used by skilled trademark searchers. Before investing a lot of time and money promoting your website under your chosen domain name, you will be wise to conduct a more intensive search or pay a pro to do it for you. (See Section D and Section E, below.)
1. Go to the Trademark Database
The first step is to go to the PTO's website at http://www.uspto.gov/tmdb/index.html. You'll see the page shown below:
2. Choose the Type of Search
There are four different ways to search the database. The PTO provides online help, which is pretty good, along the way.
According to the PTO's Help file, the easiest option is the Combined Trademarks search. However, we disagree (respectfully, of course). All things considered, we think you are probably better off starting with the Boolean Search option. It provides the same basic choices as the Combined Trademarks search but adds a level of flexibility that makes it easier to search the database.
3. Select the Database to Search
You can search just for registered trademarks, just for pending trademarks, or for both. For most purposes, you'll want to search for both categories. After all, if a trademark is pending, you will have to pay as close attention to it as if it were already registered. Further, if you already own a trademark (because you were the first to use it) that you think conflicts with a pending trademark, you can initiate what's known as an "opposition" to prevent the registration. An opposition is a formal proceeding conducted by the PTO that is similar to a trial; you'll probably need a lawyer. (See Chapter 9.)
4. Formulate Your Search
The heart of all trademark searching is choosing the correct terms to search. Here are some tips for making the most of your trademark search.
a. One Term or Two?
With a Boolean search, you can look for one or two terms, which you enter as Term 1 and Term 2 on the screen. You may need to search for only one term. For instance, if your proposed domain name is MandalayLemonPies.com, you might want to search only for the word "Mandalay," the distinctive element of your name. If so, you would enter that word as Term 1, leave the Term 2 box blank, and then click Search. Or, if you wanted to search for all trademarks containing the term "lemon pie," you could enter that exact phrase—surrounded by quotation marks—as Term 1 and conduct your search.
TipYou can search for more than two terms. If you want to formulate a search that uses three or more terms, you can start with the Manual Search option instead of a Boolean search. It works the same way as does the Refine Search procedure, which is explained in Section 6 below.
b. Using Operators
If you enter terms in both the Term 1 and Term 2 boxes, you'll need to pick what's called an "operator" to connect them. You can choose among the operators AND, OR and ANDNOT.
If you select AND from the pull-down menu of operators, you are telling the search engine to pull up all trademarks that contain both of your search terms. For example, the search query "shark AND talk" will produce every trademark that contains both the word "shark" and the word "talk." It will not produce a trademark that doesn't have both words.
If you enter these same search terms, but select the OR operator (making your query "shark OR talk"), your search will produce a list of all trademarks with the word "talk" and all trademarks with the word "shark." Needless to say, that list would be very long, because so many trademarks are likely to have the word "talk" in them. However, this approach can be very useful if your proposed domain name contains two distinctive words and you want to review every trademark that has either word.
For instance, suppose you're considering the name AnalogAstromaps.com for a website featuring a series of star charts. You would most likely want to use the OR operator to search for any trademarks containing either "analog" or "astromaps." Any trademark with either term might knock out your proposed domain name if the context showed a likelihood of customer confusion.
The third operator—ANDNOT—is not nearly as powerful as the AND and OR operators. You can use the ANDNOT operator to exclude from the search results any term you enter as Term 2. For instance, you may decide that you want to see every trademark with the term "astromap" but no trademark with the term "starchart." This search query would look like this: astromap ANDNOT starchart.
There is actually one more operator, but it's rarely used. The XOR operator lets you search for any trademark that has either Term 1 or Term 2, but not both. For example, if you searched for "analog XOR astromap," your search would turn up trademarks with either "analog" or "astromap," but not trademarks that contain both terms. There is seldom a reason to exclude a combination of two terms—indeed, in this example, the combination would be the most important trademark to retrieve.
c. Focusing on the Most Distinctive Terms
Focus on the part of your domain name that is most distinctive, because it is that part of your name that would most likely cause consumers to confuse your name with an existing trademark using that term. For instance, if your proposed name is zoroasterdesigns.com, the word to use in your search is "zoroaster," since it is by far the more distinctive of the two words. "Designs" is a generic word that can be used in a lot of different trademarks without creating customer confusion. So although you should search for any mark that contains either designs or Zoroaster, you are primarily interested in Zoroaster. You would not want to search just for "zoroasterdesigns," because it is very unlikely that that particular word would show up as a registered or pending trademark. (And if it did, a search for "designs OR zoroaster" would turn it up, anyway.)
It is also wise to go a step further and search for marks that contain one or more of the distinctive syllables in your name. For example, if you want to use bioscan.com, you might want to look for trademarks that contain either "bio" or "scan," because you might turn up something similar like "biosearch" or "cellscan." But it wouldn't make much sense to search for marks containing syllables that wouldn't likely be used. For example, the syllables "gazoon" and "tite" are not nearly as likely to be used in existing marks as are "bio" or "scan."
TipDon't use the .com in your search. Even though you are looking for a possible conflict with your domain name, which probably ends with a .com, don't enter the .com in the search engine. Although an increasing number of domain names are being registered as marks, complete with the .com, it is the other part of the name (to the left of the dot), that will create any likelihood of confusion, and thus a trademark conflict. Adding a .com to your search will very likely produce a report that overlooks important marks you need to know about.
d. Searching for Phrases
You can use two or more words as a single search term. All you need to do is enclose the phrase you're searching for in quotation marks. For example, a sensible search for Mandalay Lemon Pies would consist of searching for both Mandalay and the phrase Lemon Pies. You would do this by entering Mandalay as Term 1 and "Lemon Pies," (including the quotation marks), as Term 2.
e. The Truncated Words Feature
When you search for a particular term, it's useful to also search for slight variations of the term—for instance, if you are searching for the word "saber," you'll want to know about trademarks using the British spelling, "sabre." The computer won't find these variants for you without special instructions.
Fortunately, it's easy to get the computer to search for slight variations. One of the options offered by the PTO's Boolean search is what's called "right truncation." Right truncation allows you to chop off as much of the right-hand portion of a word as you wish and have the computer search for all words that start with what's left. For instance, instead of wondering whether to search for "sabre" or "saber," you could search for all trademarks which contain the root segment "sab." This would pull up both variations of "saber," but would also produce unrelated terms, such as "sabbath." To create this truncation effect, simply put an asterisk at the end of the string of letters that you want to search, as in "sab*."
f. Searching for Sound-Alikes
In addition to searching for names that are similar to yours in appearance, it is also important to search for words that sound alike. For example, gazoontite.com and gesundheit.com don't look that much alike, but they sound identical and might well confuse customers.
5. Choose the Part of the Database to Search
After you enter your search terms and choose the appropriate Boolean operator, there is one further step to take. For each term, choose which parts (fields) of the database you want to search. There are a number of choices here; the online help explains each field. We recommend the default field, which is "combined trademarks." Combined trademarks includes the literal version of all trademarks, registered or pending, and a slight variation on the trademark entered in the record by the PTO when the variation is common. For instance, if the trademark uses the word term light, the PTO may also add the word "lite."
Trademark Searching: A Real-Life Example
Bob and Steve have played tennis together for many years. When they hit their mid-fifties, one or the other would occasionally show up with a minor injury (sore shoulder, tender elbow) that dictated a change of pace in the game. They invented some special rules to make the game more easygoing when one of them needed a break. Bob and Steve started to laughingly refer to the rules—and the game they produced—as "Geezer Tennis." Aha, a good title for a humorous book. And perhaps the term Geezer Sports might be used on a line of books and other products for aging athletes, which could be sold on the Web at geezersports.com.
Steve checks with NSI and finds that geezersports.com is available for registration. He then decides to use the PTO's trademark database to do a trademark search, to see whether Geezer Sports is available as a trademark. He chooses to search for both registered and pending trademarks, and enters "Geezer" as Term 1 and "Sports" as Term 2. He selects AND from the pull-down menu of operators and leaves the pull-down menu for fields on "Combined Trademarks."
The search results show no registered or pending trademark using "Geezer Sports." Now what? Steve takes another look at the proposed trademark and realizes that the distinctive part of the name is "geezer," and that "sports" is a generic term. In other words, if there are other trademarks out there using geezer, Steve should know about them, even if they don't also use "sports." Steve performs another search, this time using "geezer" as Term 1 and leaving the Term 2 box blank. This time, the search turns up five trademarks that use the word "geezer."
One of those trademarks is Geezer Golf. Uh-oh. Steve clicks Geezer Golf and discovers that Geezer Golf was registered in three international trademark classes: 016 (Paper goods and printed matter), 028 (Toys and sporting goods) and 035 (Advertising and business services). This means that the line of Geezer Sports books that Steve and Bob had imagined would fall into at least two of the same classes as those for which Geezer Golf is registered. (For more information about the trademark classification system, see Chapter 8, Section D.) Using geezersports.com might well confuse customers about articles sold on Bob and Steve's website and those identified by the existing trademark. (Customer confusion is discussed in Chapter 7.)
Bob and Steve are free to use geezersports.com as a domain name, because nobody else has claimed it. But because the name is so similar to a trademark that is being used in connection with similar types of products, the public might well be confused. This means that Bob and Steve probably couldn't get the name registered with the PTO—and even if they did, they might be sued for trademark infringement.
Alas, Steve and Bob give up on "Geezer Sports" but continue to enjoy their tennis rivalry. Maybe they'll come up with another clever name in the course of a particularly heated match.
6. Refine Your Search
After you get your results from a PTO search, you'll have an opportunity to refine your search. You can modify your search, either to broaden it if you received too few results, or to more narrowly focus your search if you received too many.
Probably the most important feature of the "Refine" or "Manual" search options is that you can combine Boolean operators. For example, suppose your proposed domain name is MiracleMediations.com. Using the Boolean search option as a starting place, you enter "mirac*" as Term 1 (truncating the term with the asterisk, to also search for "miracle") and "mediat*" as Term 2 (truncation lets you search for "mediate," "mediation" and "mediator" as well as "mediations"). You choose the AND operator to search for trademarks that contain both terms (plus the variations taken into account by the asterisk).
This search is a good start, but as you review your search results you realize that you want to search for trademarks that contain the word "arbitration" as well. To do this, you create a new search query that looks like this: "ms/mirac*" AND "ms/mediat*" OR "ms/arbitrat*." This search expression tells the computer that you want all trademarks that contain a variant of the truncatedterm "mirac*" and either the term "mediat*" or the term "arbitrat*."
The ms/ that precedes the truncated terms is what's known as a field code. The Manual/Refine search requires the use of these field codes if you want anything other than a "Combined Marks" search (the default search represented by the ms/). For instance, if you want to search for all marksowned by a particular company, you can use the field code "on/" in connection with the company's name. Similarly, use of the field code "gs/" lets you search for all marks that are used on goods or services containing the terms you use in your search query. For more on field codes, use the table that appears on the Manual/Refine search page and click whatever field code you wish to know more about.