Patents and Trademarks @ the Libraries

Articles

Books

Course Reserves

Government Resources

Patents & Trademarks

Encyclopedias Etc.

Trademark Research in the University Libraries

The Trademark Collection

At this time, the trademark collection, located in the Paul Laurence Dunbar Library, includes over 3,000,000 United States trademarks in the following formats:

United States Trademark Holdings

1871 + - USAMark DVD and CASSIS2
1884 + - also available via the internet www.uspto.gov (Note: USAMark contains all trademark registrations since 1870 while the Web trademark database includes all live trademark registrations from 1884 to the present, live pending applications and all abandoned, cancelled or expired trademarks from 1984 to the present)

In addition to the trademarks themselves, the library contains U.S. Trademark Office publications, Acceptable Identification of Goods and Services Manual, Trademark Design Code Manual, the Official Gazette for Trademarks, information on attorneys and agents registered to practice before the U.S. Patent and Trademark Office, fee schedules, and similar material.

Trademark Research

A trademark is a word, phrase, symbol or combination identifying a product or service in the marketplace. This covers logos, marketing slogans, brand and trade names. Trademark can also cover shapes (such as a bottle), sounds, colors or smells. Registered trademarks are trademarks granted additional legitimacy by the appropriate government agency. Business names are not trademarks; however, they are often used interchangeably. U.S. Business names are protected under other legislative laws. State governments also register trade and service marks. In most countries, but not all, registration of a mark is not required to gain legal protection. Most marks are not registered, and may be legally protected by "common law," to a lesser degree. All of these types of marks can be used to stop others from using identical or similar marks.

United States trademark examiners use a "likelihood of confusion" test to determine whether a conflict exists with other U.S. registered marks. Likelihood of confusion is dependent not on a side by side comparison of two products or services but the “fallible recollection of an average purchaser who normally retains a general rather than a specific impression of trademarks." The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:

primarily merely descriptive or deceptively misdescriptive of the goods/services;
primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
primarily merely a surname; or
ornamental.

This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).

U.S. trademarks can be researched using the web database called Trademark Electronic Search System (TESS). TESS is a Web-based trademark database equivalent to X-Search, the USPTO’s in-house trademark database. In the Dunbar Library we also have CASSIS2 trademark search database available in the library. No matter how your search goes, keep in mind that trade and service mark registration is a legal procedure and should be done in conjunction with an attorney specializing in trademark law.

Conducting a Trademark Search

When examining a trademark application, examiners only search for trademarks that are registered with the USPTO. They do not search state or common law marks. It is possible, however, that there is a state, common law, or an abandoned registration that is still in use in the marketplace that may conflict with your mark. There are a number of other databases in our library that can be used to search state and common law marks. See a librarian at the Information Desk, 2nd floor of Dunbar Library, for help in using these databases.

1. Identify Specific Terms for Goods and Services

Search the Acceptable Identification of Goods and Services Manual to locate terms that describe your good or service. The Goods and Services Manual is just a guideline. It’s okay to use your own description if you can’t find an appropriate match. Check for abolished terms. Trademark registrations are not updated when terms change or are deleted. Example: Flying disc v. flying saucer for toy flying discs

If my logo is for a new beverage such as beer, a search for the word "beer" would return a listing of acceptable identifiers for beer products: malt beer, beer jugs, pale beer, etc.

2. Determine Classes for Goods and Services

Search the International Schedule of Classes (IC) for terms related to your product or service. In the Goods and Services Manual, note the International Class listed with each term.

Example: Beer

Class
021
021
032
032
032
032
032
032
032

Description
Beer jugs
Beer mugs
Beer
Black beer
Brewed malt-based alcoholic beverage in the nature of a beer
Malt beer
Non-alcoholic beer
Pale beer
Porter [beer]

The International Class (IC) for Beer Jugs is 021 and for Malt Beer it is 032. If my trademark was for a new micro-brewed beer then I could use IC 032 in conjunction with my word mark to determine if there are other similar marks registered or pending. But if I was also planning on selling beer jugs along with the beer then I will need to search IC 021.

3. Trademark Manual of Examining Procedure (TMEP)

Review chapter 1400 for the appropriate class scope notes in order to confirm the terms and classes you have chosen. For example, Class 8 (Hand Tools) includes cutlery but not surgical knives, which are in Class 10 (Medical Apparatus), or fencing weapons, which are found in Class 28 (Toys and Sporting Goods.)

4. Design Code Manual (DCM)

If your mark incorporates a design or logo you must search for trademarks that might be confusingly similar. Use the Design Code Manual to locate the appropriate six-digit code for each design element in your mark. The DCM is a numerical classification index that codifies design figurative elements into categories, divisions and sections:

Example: A Star

01 - Celestial bodies, natural phenomena, geographical maps
01.01 - Stars, comets
01.01.03 - Stars with five points

The design code for a five pointed star is 01.01.03. You can use this code to limit the results of your search to only marks with a five pointed star. But remember, even simple designs often have more than one design element.

5. USPTO Trademark Electronic Search System (TESS), Common Law and State Databases

Conduct a search in TESS combining your word mark or logo with the terms, classes and design codes you have identified in steps 1-4. Remember to search for alternative spellings, phonetic and foreign language equivalents, synonyms and homonyms. For example, SNOW BRITE, SNOW BRIGHT, SNO-BRITE, SNO-BRIGHT, SNOW WHITE, etc.

TESS is a powerful search tool. Using the "Advanced Search," you can use, Boolean Operators, "field codes" and truncation to limit or expand your searches. A few examples using the "basic index" [bi], translations [ti], and truncation, $, ? and *:

te$ology.bi. = teleology, teknology
te?no*.bi. = teknobag, technobag
*saur?s.bi. = brontosaurus, sillisauras, grillasauros
wolf.bi,ti. = wolf, lupo, ookami, lobo, etc.
wolf.bi. ADJ beer.bi. OR liquor.bi.

Common law searching may involve checking the following types of databases:

Telephone, business and manufacturing directories
Print and on-line catalogs
Trade journals and magazines
Domain name databases
Web search engines: text and images
Newspapers and newsletters
Company press releases and new product announcements

Finally, search state trademark databases for mark conflicts.

6. Trademark Applications and Registrations Retrieval system (TARR)

Check TARR for the current status of U.S. marks you found in step 5. Records found in TESS will include links to their TARR equivalents.

The following is a list of online trademark resources you may find useful in your research:

Trademark Databases

USPTO Trademark Electronic Search System (TESS): http://www.uspto.gov/ebc/index_tm.html

USPTO Trademark Application and Registration Retrieval system (TARR): http://tarr.uspto.gov/

USPTO Trademark Assignment Query Menu: http://assignments.uspto.gov/assignments/q?db=tm

USPTO Trademark Trial and Appeal Board Inquiry System (TTABVUE): http://ttabvue.uspto.gov/ttabvue/

Ohio State Trademark/Business Name Search: http://www.sos.state.oh.us/sos/businessservices/corp.aspx?Section=104

Canadian Trade-marks Database: http://strategis.ic.gc.ca/app/cipo/trademarks/search/tmSearch.do?language=eng

Trade Marks from the Patent Office of the United Kingdom: http://www.patent.gov.uk/tm.htm

Madrid Express structured (Trademarks) Search: http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp

WIPO Gazette of International Marks: http://www.wipo.int/madrid/en/gazette/

WIPO ROMARIN (International Trademark Information Database): http://www.wipo.int/madrid/en/romarin/index.htm

WIPO Article 6ter Structured Search (State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations): http://www.wipo.int/ipdl/en/search/6ter/search-struct.jsp

WIPO Appellations of Origin - Lisbon Structured Search: http://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp

WIPO Collection of Laws for Electronic Access - CLEA: http://www.wipo.int/clea/en/index.jsp

Trademark Classification Manuals and Search Guides

USPTO Basic Facts about Trademarks: http://www.uspto.gov/web/offices/tac/doc/basic/

Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises: WIPO: http://www.wipo.int/freepublications/en/marks/900/wipo_pub_900.pdf

International Scedule of Classes: http://www.uspto.gov/web/offices/tac/doc/basic/international.htm

U.S. Trademark Office - Acceptable Identification of Goods and Services Manual U.S. and International Classification numbers): http://tess2.uspto.gov/netahtml/tidm.html

USPTO Design Code Search Manual: http://tess2.uspto.gov/tmdb/dscm/index.htm

Trademark Manual of Examining Procedure - TMEP: http://tess2.uspto.gov/tmdb/tmep/

USPTO Official Gazette - Trademarks: recent five weeks: http://www.uspto.gov/web/trademarks/tmog/

USPTO FAQ about how to use TESS to search for Native American Tribal Insignia: http://www.uspto.gov/web/offices/tac/tribalfaq.htm

Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (Adobe Acrobat needed to view document): http://www.wipo.int/madrid/en/guide/

Nice Classification of International Goods and Services: http://www.wipo.int/classifications/fulltext/nice8/enmain.htm

International Classification of the Figurative Elements of Marks - Vienna Classification: http://www.wipo.int/classifications/fulltext/vienna5/enmain0.htm

Japanese Patent Office Examination Guidelines for Trademarks: http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/tt1302-002.htm

European Community Office for Harmonization in the Internal Market (OHIM) - Trade Marks and Designs: http://oami.europa.eu/en/default.htm

Summary of the Official journal of the OHIM: http://oami.europa.eu/en/office/diff/officialj.htm

Network Solutions Domain Name Search: http://www.networksolutions.com

Country Data: from Rouse & Co. International: http://www.iprights.com/countrydata/index.asp

National and International Trademark Offices

United State Patent and Trademark Office: http://www.uspto.gov/main/trademarks.htm

Ohio Secretary of State: http://www.sos.state.oh.us/sos/businessservices/trade.aspx

State Trademark Offices: http://statetm.tripod.com/

Canadian Trade-marks: http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_main-e.html

Industrial Property Digital Library - Japan: http://www.ipdl.ncipi.go.jp/homepg_e.ipdl

Community Trademark System (European Union): http://oami.eu.int

WIPO Trademark Gateway: http://www.wipo.int/trademarks/en/

Intellectual Property - General Information

Country Data: from Rouse & Co. International: http://www.iprights.com/countrydata/index.asp

WIPO Administered Treaties: http://www.wipo.int/treaties/en/

Interesting and Useful Trademark Related Web Sites

Trademark Research FAQ v.1.4: http://www.faqs.org/faqs/internet/trademark-research-faq/

All About Trademarks, by Gregory H. Guillot: http://www.ggmark.com/welcome.html

Other Ohio Patent and Trademark Depository Libraries

Akron-Summit County Public Library: Phone: 330-643-9075; Web site: http://www.ascpl.lib.oh.us/

The Public Library of Cincinnati and Hamilton County: Phone: 513-369-6971; Web Site: http://www.cincinnatilibrary.org/

Cleveland Public Library: Phone: 216-623-2870; Web Site: http://www.cpl.org

Ohio State University - Science and Engineering Library: Phone: 614-292-3022; Web Site: http://library.osu.edu/sites/sel/patent.php

Toledo/Lucas County Public Library: Phone: 419-259-5212; Web Site: http://www.toledolibrary.org/reference/business/busin.asp

Need Help?

Site Search