Checklist
Consider using the following checklist as possible items to do in connection with your trademark clearance search.
- Discuss types of trademarks and relative strengths with client to assist in selection of a potential trademark to apply for. Determine whether mark is to be a trademark, service mark or both. Determine description of goods and services to be offered under mark.
- Determine the type of trademark selected by client:
- Fanciful Mark (Registrable)
- Arbitrary Mark (Registrable)
- Suggestive (Registrable, but significantly weaker than Fanciful or Arbitrary, with a higher potential of an Office Action by PTO claiming that the mark is merely descriptive.)
- Descriptive Marks (Not subject to registration on the principal register unless there is evidence of secondary meaning or acquired distinctiveness. ITU application is not available for this type of application.)
- Generic (Not subject to registration)
- Discuss relative strengths and weaknesses of the chosen mark with the client to help the client decide whether or not to proceed or select a new potential mark.
- Perform Search and retain search results.
- Internet search via Internet search engine, i.e. Google or Yahoo
- Exact Match
- Similar Phonetically
- Search via USPTO TESS database: http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:73w287.1.1
- Internet search via Internet search engine, i.e. Google or Yahoo
- Exact match
- Phonetically similar
- Visually similar
- Similar commercial impression/context
- Foreign equivalent
- Discuss search results with the client to discuss whether or not to proceed or select new potential mark and document findings with written communication to the client.
- If a decision is made to apply for a mark, determine if the application will be based on USE or ITU basis. If filing is based on USE, obtain specimen evidencing USE, date of first use and date of first use in interstate commerce.