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Trademark Searching Tips

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I'm currently searching for a Trademark. The Patent and Trademark Website help pages aren't the most helpful. So Far here are my best tips. I'm not a lawyer. Please contribute if you have knowledge or experience to share.

 

In general most people will say to hire a lawyer.  I would think the best first step is to not waste the lawyer's time and your money by trying to trademark something you yourself could have determined is trademarkable. In general you don't want a trademark that is merely descriptive. It shouldn't be merely a surname. It shouldn't be a  geographical place name indicating where you are(in most cases). The best trademarks are suggestive, arbitrary or fanciful. If possible trademark the name words only first (word mark). 

 

1)  Go to https://www.uspto.gov/trademarks-application-process/search-trademark-database

2) Click "Search Trademarks"

3) Click "Word and/or Design Mark Search (Free Form) "

4) To search, enter this in the search box and click "Submit Query"

Quote

 

Because the Trademark office lumps beer, wine and spirits into the same category you have to check both "International Classes" 32(beer) and 33 ( wine). Additionally, because there are things like brew pubs and winery restaurants you have to check 43 (restaurants), the restaurant trademark class

(live)[LD] and (MY_DESIRED_NAME)[COMB]  and  (033)[IC]

(live)[LD] and (MY_DESIRED_NAME)[COMB]  and  (043)[IC]

 

If your name has more than one word try it this way:

(live)[LD] and (MY_DESIRED_NAME_FIRST_WORD)[COMB] and (MY_DESIRED_NAME_SECOND_WORD)[COMB]  and  (033)[IC]

 

 

4) Google your desired trademark along with key words like brewery, beer, wine, distillery, whisky, etc. Unfortunately a company can claim a trademark infringement even if they did not register with the Trademark office. 

 

Additional info:

CLASS 32 (Light beverages) Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
CLASS 33 (Wine and spirits) Alcoholic beverages (except beers).
CLASS 43 (Hotels and Restaurants) Services for providing food and drink; temporary accommodations.

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I  practice as an attorney with a fair bit of experience in trademarks. While it is true that the USPTO has effectively lumped together all alcohol producers (despite claiming they they have no such de facto rule), the same is not necessarily the same for restaurants vs. manufacturers of alcohol. See - https://thettablog.blogspot.com/2017/08/ttab-test-is-cannibal-for-beer.html

http://ttabvue.uspto.gov/ttabvue/ttabvue-86682532-EXA-19.pdf

I represented the brewery in the case linked. It is always a case by case basis and it is generally advisable to search for restaurants with the same name but they aren't always deemed confusingly similar.

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I have just wasted 3 months on a trademark after I searched and it came back with a Mexican Co. with similar names. From that, I learned the differences from the three search types.

Word only means you want to use the name with anything. Think Kleenex. It doesn't matter where or how it is used, the trademark follows the words not logo. Free form allows for the design marks(label) to be part of the trademark. The wording is only trademarked when used with the logo elements.

 

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