Conducting an Initial Trademark Search - Why Is It More Difficult than It Seems?
A lot of people think that trademark searches are as straightforward as doing a simple google search. Watch this cartoon and find out how involved trademark searches can be. And if you have a valuable brand you want to protect, feel free to request your free comprehensive trademark search by filling out the form on this website.
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NARRATOR: Elina decides to register her trademarks YOU DRESS SMART, ODEZHDA, PHANTOM DRESS and IVANOV for her clothing business. She did a trademark search herself, and didnâ€™t find anything. Excited and confident, she wants Trademark Factory to help her register these trademarks.
ELINA: Hello, I would like to file 4 trademark applications please.
TRADEMARK FACTORY: With pleasure. The first step is for us to do a trademark search to make sure your marks are registrable. We do this for free.
ELINA [irritated]: No need to waste time on that. I already did all the searches. Thereâ€™s nothing out there.
TRADEMARK FACTORY: Iâ€™ll be the first to congratulate you if your trademarks are truly registrable, but trust me, it takes more than a simple search to establish if your trademarks can be registered. Last thing you want is to find out that they are not registrable in the middle of the process, right?
ELINA: Ok, go ahead, but I told you, there is nothing.
TRADEMARK FACTORY: Great. Letâ€™s start with this. Can you please tell me what kind of products do you sell?
ELINA: Clothes, blouses, pants and skirtsâ€¦ Not sure how itâ€™s relevant.
TRADEMARK FACTORY: Because even identical trademarks can coexist if they are used to identify completely different products and services. So we canâ€™t really tell if marks are confusing unless we know what products and services they cover.
TRADEMARK FACTORY: So, letâ€™s take your first trademark: YOU DRESS SMART. Letâ€™s seeâ€¦
TRADEMARK FACTORY: You already know that there are no identical marks. Thatâ€™s why your search didnâ€™t show anything.
ELINA: I told ya!
TRADEMARK FACTORY: However, the proper way to search is to also check several elements that your trademark can be broken into. For example, in this case, I will search â€œYOU DRESSâ€, â€œDRESS SMARTâ€ and â€œYOU SMARTâ€ in the trademark field as well as searching for â€œYOU DRESS SMARTâ€.
TRADEMARK FACTORY: And if we find a many similar marks, we will narrow down the search by only searching for similar trademarks registered and applied for in connection with clothing.
ELINA: Sounds complicated.
TRADEMARK FACTORY: Look what Iâ€™ve found!
TRADEMARK FACTORY: This trademark is not identical but itâ€™s very similar. Your application will probably get a confusion objection.
ELINA: So, what now?
TRADEMARK FACTORY: Iâ€™d brainstorm to come up with another name, and weâ€™ll be happy to check if itâ€™s registrable.
ELINA: OK, what about the other marks?
TRADEMARK FACTORY: Letâ€™s see. ODEZHDA, what a weird word. What does it mean?
ELINA: It means â€œclothesâ€ in Russian, and thought itâ€™d be great if I could trademark it, since no one has done it.
TRADEMARK FACTORY: Searching the Trademarks Office database is only half the story, there are many other things we look at when doing what you think is a simple trademark search.
TRADEMARK FACTORY: For example, you canâ€™t trademark the names of products, even in a foreign language. ODEZHDA means CLOTHES in English, and so itâ€™s simply not registrable.
ELINA: No wonder I didnâ€™t find it in the databaseâ€¦ So, should I give this one too?
TRADEMARK FACTORY: Not necessarilyâ€¦ If you added another word to your brand, it may become trademarkable.
ELINA: How about WICKED SMART ODEZHDA?
TRADEMARK FACTORY: Itâ€™s no longer the name of the product. And itâ€™s not descriptive in either English or French, so that one could work. Actually, speaking of French, let me check if there are any French equivalents registered in Canada because there are two official languages in Canadaâ€¦
TRADEMARK FACTORY: Good news. I didnâ€™t see any French equivalents, so this one looks OK.
ELINA: Wow, so many things to know!
TRADEMARK FACTORY: Thatâ€™s why you should have someone with years of experience to do the searches for you. The real problem with not knowing what to search for is not that youâ€™re going to make the wrong decision about the results you find. The problem is that you are making decisions not knowing that there may be other important things you havenâ€™t found.
ELINA: I think I understand why itâ€™s more difficult that it seems.
TRADEMARK FACTORY: Letâ€™s move on. So you say you didnâ€™t find anything when you searched for PHANTOM DRESS. Thatâ€™s right, there is nothing when PHANTOM is spelled through P-H. But if you do a search using phonetic equivalents, you will see that someone had already trademarked FANTOM DRESSES, spelled with an F.
TRADEMARK FACTORY: The last one IVANOV. Is this a last name?
ELINA (surprised): Yes, itâ€™s my last name.
TRADEMARK FACTORY: Let me check something.
ELINA: Why are you searching a phone book? Since when do they publish trademarks in a phone book?
TRADEMARK FACTORY: They donâ€™t. But they publish last names. And common last names cannot be trademarked in Canada.
ELINA: Well, how common can a Russian name be in Canada?
TRADEMARK FACTORY: As long as there are more than 25 names in the book, it will be considered common. And guess what, there are 47 IVANOVs in Toronto alone. Sorry!
ELINA: So essentially, every search Iâ€™ve done is incorrect. Every single one of them!
TRADEMARK FACTORY: Donâ€™t blame yourself. Most people assume that doing a trademark search is as simple as doing a regular Google search. As you have seen, it isnâ€™t. UNLESS you really know what youâ€™re searching for.
ELINA: Makes sense.
TRADEMARK FACTORY: And again, we offer our trademark searches, help you with your trademarking strategy and suggest how to make your trademarks more registrable FOR FREE!
ELINA: Thatâ€™s such a valuable service!
TRADEMARK FACTORY: Thatâ€™s why many business owners who order it from us choose to use Trademark Factory to get their trademarks registered.
ELINA: From now on, whenever I come up with a cool name, I will come to you first and not waste my time on useless searching. My searches were incorrect anyway.
TRADEMARK FACTORY: All you need to do is fill out a form. Go to FreeTMSearch.com and weâ€™ll take it from there.
Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.
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