How to Conduct a Trademark Search for Software


Hey everybody, it’s Steve, Chief Paralegal
here at Gerben Law Firm. In this video, we’re going to look at how to run a
basic federal trademark search for software. Before we get started let’s take a bird’s-eye
view of the trademark registration process. First is the search,
then the application, which is reviewed by an examining attorney with the
government. This examining attorney is checking to make sure that your
mark does not create a likelihood of confusion — those are going
to be our buzz words, “likelihood of confusion” — in the marketplace
with a previously registered trademark. I point this out because it does not take
an exact match of your desired trademark to justify a rejection of your application. Okay, so first we need a name for our software.
For that I’m using a random word generator, and we got pentacapsular.
It’s never easy with the random word generator, but I do think this will be
a good word to check out, because a lot of times when people are registering
a trademark, they’ll do things where they’ll combine two words to
make one word. So here we’ve got pentacapsular, five capsules.
It’ll be good to see how to run a trademark search when you’ve got to
split up a word like this. Okay, so the first thing we do is go to the
uspto.gov. I’ll include links to all of this in the comments section below.
Click Trademarks, click TESS, click Basic Word Mark Search. Okay, we’re
ready to get started. First thing you want to do, click Live. We
don’t care about dead marks right now. And in this field, just enter your
word “pentacapsular.” No surprise there, no records found. Now as I had mentioned before, just because
there is not an exact match to your desired trademark does not mean that
it will definitely get registered. Again, the examining attorney
is looking for a mark that could cause a likelihood of confusion in the marketplace.
So this could be a similar trademark. It could just sound similar.
So what we want to do in this case is broaden our search. So how do
we do that? Well, we go back and now I want to introduce
you to the dollar sign, which is the most important thing you’re going to
want to use while using the uspto.gov. The dollar sign tells the software
to look for any numbers or words that follow what you have already entered. So here we’ve got “penta” and the dollar sign.
We click Submit, 245 records, way too many to look through. So
we’re going to want to whittle this down. How do we whittle it down? Click on Free Form. This is known as a free
form search. As you can see, I already have the search written up, but let’s
go through it. Here we have “penta” with the dollar sign, just like we
had previously. But now we have MI, which is Mark Index. It’s in brackets.
This tells the software that this is the mark we’re trying to look for
and tells the software to look for this and make sure it’s live, LD, and
also we want it to be in Class 042. Now, if you’re wondering what I mean by class,
then check out this video right here, which is going to go in detail
over the types of classes you want to look in when registering software. Here I have 042, which is for non-downloadable
software. We’re also going to look in 009, which is for downloadable
software. Now just as a quick note you want to make sure you put the zero
here, because if you don’t, the system will tell you that there’s no records.
But with the zero in there, records. Same goes for 009. You’ve got to
have the two zeroes in there. Submit. Okay? Let’s go back to 042, penta 042. You may notice
here some of these marks are registered, some of these marks are not.
There’s basically two reasons why the mark wouldn’t be registered. Either
it was recently applied for, or an examining attorney has issued an office
action. The office action either tells the applicant that there is a likelihood
of confusion that their mark will create in the marketplace, or that there’s
a problem with their paperwork. Right now let’s just take in the broad picture
up here. We’ve got things like pentacam, pentascanner, pentaho, pentagram.
Let’s inspect these by clicking on them and see if they’re all for
software. Pentacam is. If you come down here, development of computer hardware
and software. Next Doc, software. Next Doc, software. So what I’m
seeing here is that there are a lot of marks that start with penta, have a
different suffix, which are allowed to be registered for software. So
now I want to check out capsular. Let’s go back. So let’s look, no records.
But what about capsule? Again remember, if at first you don’t see something,
broaden your search. Here we go. Now we’ve got capsule marks. We can click
on them. Are they for software? So far, website design, development
for others, software. Okay, so now we’ve got an idea of what’s in Class
042. But remember, I also said you want to check out Class 009. So let’s
click Submit. Now we’ve got 18 records. We could go through all of these. We can also move the dollar sign to the front
of capsule to make sure that we’re not missing anything that came before
capsule. So hopefully, this gives you some ideas on how to get started
with your search. To review, use the dollar sign to break your
word apart. Look in Class 042. Also look in Class 009. If you watch my trademark
class video on software, you’ll also know look in Class 38. You’ll
also probably want to look in Class 35. My personal opinion is that when it comes
to software, I really recommend using an attorney like Josh here. It’s not
that you can’t do it on your own, but from personal experience software
is very tricky when it comes to the USPTO. The USPTO has allowed identical
trademarks to be registered so long as the software is different. That’s
not always the case, but occasionally some words have been heavily
diluted in the marketplace. So I would suggest naught for nothing, just give
Josh a call. It’s a free consultation 281-6275. Finally, before I go, I just want to go over
some limitations of this video. It is just a brief overview, but I
hope it helped to familiarize you with the USPTO and get you started on your
search process. At Gerben Law Firm, we use professional grade search software
which allows us to go way more in depth into these types of searches.
Second, it doesn’t cover state or common law searches, which is part of a
comprehensive search that you want to run in order to ensure no legal trouble
down the road. And third, it’s not legal advice and is not a substitute
for talking with an attorney. But thank you very much for watching, and
because each trademark search is unique, you can check out some of my other
trademark search videos, which should help you even more through the process.

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