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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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To all, regardless of how hard you search and what advice you get from attorneys, there is no way to prevent trademark bullying from a marginally close big name company. We searched our name Grant View Distillery and were advised by attorneys that there would be no issue in registering. The trademark office reviewed the filing and allowed us to continue the registration as I they did not see a conflict. The name had quite a significance to us and the community as we live work and distill on a hill named “Grant View Heights” as it overlooked the former Camp Grant military base.

On the last day of publication, Grant’s distillery from Scotland owners of Grant'sThe BalvenieKininvieMonkey ShoulderAerstoneClan MacGregorHouse of HazelwoodThe Gordon HighlandersTullamore DewHendrick's Reyka, Sailor JerryOld Vatted DemeraraWoods Old NavyVat 19Gibson’s FinestTaboo MontelobosMilagroDrambuieSolernoAncho ReyesAncho Verde, Three BarrelsThe Raynal, and Art In the Age Craft Spirits, asked for an extension and eventually filed an opposition based on their “Grant’s Elementary” trademarked Scotch. 

As discussions progressed our attorneys all said they had a weak case as there was already a Glen Grant trademark and an unregistered Samuel Grant Bourbon (bottom shelf Safeway brand made by Barton 1792). The consensus was that we would be almost guaranteed to win but expect to spend $50,000+ in the fight as they were just trying to strengthen their mark and as a startup, we were an easy target.

As a startup, I have other things I would rather spend money on (like some SS fermenters & a chiller)

We proposed to change our name to GrantView (one word). They initially agreed as long as we did not register the mark and limit our capacity to 100,000 gallons (definition of Craft in Illinois). We drug or feet for a bit and now they want us to change our name to GrandView (one word) Limit our production, and submit every future label for their review. Along the way we also had a graphic artist design a tree logo based on a huge Walnut tree on our property. They also threw in that they now wanted us to loose the logo no matter what our future name is as the boxes they ship their product in have an unregistered “Grant’s family tree” logo on them (totally different from our tree”

Bottom line, as they have a virtually unlimited budget, I am being forced to change our name and loose a significant historical connection that is of great value to our community. 

I guess that because they have an unlimited budget, my only real recourse in this all is to ask all of you as Craft Distillers to join me in Boycotting all their Products because of their bulling tactics. 

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Working through a similar issue regarding a product right now. Let's just say it's easier to buy a new roll of labels than fight 'the man.' 

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It also depends on who you are fighting. We lost our first name due to trademark as stated above. We came up with a second and we were opposed by another company with names close, but also no chance of confusion. After working with them we were able to come up with an agreement and we were able to gain our trademark. 

When we first starting negotiating with them we recognized the name was close enough to a UK company owned by Richard Branson. We thought we had no chance. The company that we had to negotiate with fought and beat Branson's company. It isn't all about size. Good luck. It is definitely an uphill battle, but if you can show no confusion it is a battle that has a possibility of being won. 

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