Why is trademark (TM) verification in the United States a cornerstone on the path to registration? Yes, this process may sound boring, but it plays a key role in the life of any brand. In this article, we will look at the process of conducting a preliminary trademark search, explain its importance and describe the situations in which it becomes appropriate to conduct such a search.

What is a trademark?

First of all, what is a brand name? It is a unique name, logo, or some other symbol that distinguishes your company, product, or service from the rest. A TM helps consumers identify and differentiate your product among many similar ones. Sounds important, doesn't it?

Why register a trademark?

While some companies may choose to do without registering their trademark, most choose to do so. Why? Because it will help protect the reputation of the brand, prevent potential problems and preserve the right to use their trademark.

The process of trademark registration includes several stages, and one of the most important is a preliminary check for uniqueness. Let's look at why this is so important.

Представьте, что вы создали потрясающий товарный знак, и вы уверены, что он уникален. Вы подаете заявку на его регистрацию, и всё кажется отлично. Но вдруг вы узнаете, что кто-то другой уже зарегистрировал что-то очень похожее. Это может привести к судебным разбирательствам и большим затратам.  Поэтому предварительная проверка на уникальность – это ваша страховка от подобных неприятностей.

According to the United States Patent and Trademark Office, not all trademark applications are approved the first time around. The probability of rejection is high. Therefore, a uniqueness search helps to reduce the risk of rejection.

 Creating a quality trademark may require financial investment in design, name and slogan development. Without pre-screening, you could be wasting money if your application for registration is rejected. No one wants their money to go to waste, right?

If you don't do a preliminary uniqueness check, you may have to start from scratch. This can be particularly problematic for entrepreneurs who have already managed to market their goods under an unregistered trademark. Believe me, this is the kind of headache that is easier to avoid.

For a more effective search, it is recommended to contact professionals in this field. TaxFreeCorp lawyers specialize in trademark registration in the United States and perform uniqueness checks. This increases the chances of your application being successfully processed.

When should TMs be tested for identity and similarity?

This question is asked by both novice entrepreneurs and experienced businessmen. Let's get into the details!

 So, preliminary brand identity and similarity testing must be done:

When creating a product and a trademark

Once you have an idea for a product and its name, something that can become an important element of your business, the first step is to check your future trademark for uniqueness. Why is this necessary? The first reason is to ensure the safety of your brand. You don't want to run into legal trouble for carelessly infringing on someone else's intellectual property rights. Remember, starting a business from scratch because of such a mistake is not a pleasant experience.

Before entering new markets

If your business is already successful in one country, it does not mean that your trademark will be valid in other countries. Before expanding into foreign markets, it is important to make sure that your trademark has exclusivity not only in the country where you are already registered, but also in the countries you plan to enter.

Before filing an application for trademark registration

There are companies that continue to use trademarks without officially registering them. Some believe that the law does not prohibit this practice, and they can use unregistered trademarks without consequences. But it is important to remember that after applying for a trademark registration, it may turn out that someone else already owns a similar registration. This can create many unpleasant situations and costs.

Even if you have already conducted an inspection at the initial stage of your business, it is recommended to repeat this procedure before applying for trademark registration. This will help you avoid numerous legal and financial problems. 

What are TM classes: how to determine which TM class a particular product belongs to?

Before registering your product or service as a trademark, it is important to determine the category to which it belongs under the International Classification, which is used both in the United States and in many other countries. This classification includes 45 classes of trademarks, of which 34 cover a variety of goods and 11 cover different types of services.

For example, Class 1 includes chemicals used in various industries, Class 2 includes paint and varnish products, and Class 3 includes cosmetics and cleaning products. In the context of services, Class 35 combines advertising and business services, Class 36 includes insurance and financial services, and Class 37 includes construction and repair services. The full list of classes can be found on the official website USPTO.

Let's look at choosing a class for your product or service, using shorts as an example. If you manufacture and sell shorts, your goods will be classified in Class 25 - "Clothing".

Если же ваш бизнес также включает в себя предоставление услуг по нанесению логотипов или другой декоративной обработке, например,  на спортивные шорты по заказу клиентов, то вам следует рассмотреть регистрацию торговой марки не только для товара, но и для соответствующей услуги. В этом случае услуга будет отнесена к классу 40 – «Treatment of materials (обработка материалов)».

To pinpoint the exact class for your tracksuit and related services, you can use the search on the official USPTO website. Enter the name of your product or service in the search bar and you will get complete information about the product and the class it belongs to.

What are related classes and similarity of goods

The United States uses an international trademark classification, also known as the Nice classification. However, the United States Patent and Trademark Office (USPTO) has stricter requirements for selecting a class of goods or services than many similar organizations in other countries. Therefore, you may need additional knowledge to determine the correct class and correctly file a trademark application.

The selection of related classes plays an important role in this process. The USPTO classifies some classes as "related" or "coordinated". This is because a business often involves a variety of aspects. For example, if you sell leather coats in a physical store, you will probably also offer leather handbags and other similar goods. Thus, your main class of goods (e.g. Class 25 - "Clothing") will have a related Class 18 - "Leather goods".

We recommend limiting yourself to one related class in your trademark application to increase the chances of your application being approved. Although an unlimited number of goods or services can be listed in each of these classes, it is recommended to select only those that you actually use or plan to use with your trademark. An overly broad range of goods may increase the risk of your trademark registration being refused and the need for a revocation, which will incur additional costs.

In order to enforce intellectual property rights and avoid infringement of others' trademarks, it is important to determine whether your trademark is being used for similar goods or services. But how can you determine which goods or services can be considered similar to yours?

The Nice Classification cannot always serve as a reliable criterion, as not all goods and services in the same class can be considered similar. For example, deodorant and sandpaper belong to the third class of the international classification, but they are clearly unrelated. On the other hand, goods may not always be considered dissimilar just because they are assigned to different classes. For example, dried vegetables and spices may be considered similar even though they belong to different classes.

To better determine the similarity of goods or services, the following characteristics should be considered:

• Essential product characteristics such as material and method of manufacture.
• The purpose of the product or service.
• Complementarity (where one good or service is necessary for the use of another).
• Competition (if the products or services have the same target audience, are on the same shelf in the store, and compete with each other).
• Distribution channels (if goods or services are offered in the same stores).
• Supply chain contiguity.
• The origin of the good or service (manufacturing company or service provider). 

For a more accurate selection of the class for trademark registration and correct completion of the application, it is recommended to contact professionals. This will allow you to focus on your key business objectives and avoid unnecessary organizational complications.

What are the restrictions on registering Trademarks in the USA?

Indeed, virtually any branding element used by your company can be registered as a trademark. This includes not only logos and slogans, but also acronyms, numerals, packaging designs, and even sound or smell elements. However, when applying for trademark registration, there are some restrictions to consider, which we will discuss below.

Words for the product being sold

The first thing to keep in mind is the inability to register words that directly describe the product or service you are offering. Here, for example, Amazon is one of the most famous online retailers. They have registered their trademark for a marketplace, but if they were providing river transportation services or working in forestry management, the name would not be available.

Terms describing a product or service

If your word or phrase describes a product or service, it may become publicly available and used by other entrepreneurs. For example, you cannot register the TM "Sweet Candy" for a dessert, as this description may be used by other manufacturers of sweets.

Offensive or immoral words

Another restriction is that offensive, immoral or shocking words cannot be registered. Previously, all such words were strictly prohibited for registration in the United States, but over time some restrictions have become less stringent.

U.S. national symbols

It is important to remember that you cannot use United States government symbols in your trademark. This includes the U.S. flag and other symbols associated with the government, states, or municipalities.

Geographical names

Words that indicate the location of a product or service are also best avoided in your trademark. For example, using the trademark "California Sunshine Tours" for a travel agency may cause problems in registration.

Thus, when launching a product, it is not only important to ensure that your brand name is unique, but also to check its compliance with the established requirements. To increase the chances of getting your application approved, it is advisable to utilize the services of professionals to help you in this process.

Algorithm for trademark verification in the United States

To effectively validate a trademark (TM) in the United States of America, it is necessary to follow a specific algorithm recommended by the United States Patent and Trademark Office (USPTO). This algorithm includes seven key steps, each of which plays an important role in the TM registration process.

Definition of goods and services

Before proceeding to register a TM, you need to identify the goods and services that you intend to sell or provide under the mark. Make a clear list of what will be included in your product range so that you can select the correct trademark class and prepare your application for registration. This will increase the chances of your application being successfully approved.

Choosing the right name

Choosing the right term for your product or service is a key step. Use the USPTO's official website and its search engine to determine the most appropriate term for your product. Type in a keyword related to your product or service to get a list of possible options. It is important to avoid vague or incomplete descriptions, as they may result in the denial of TM registration.

Determination of trademark class

As mentioned earlier, choosing the correct class for your trademark is important. Make sure that your mark correctly matches the USPTO's classification of goods and services.

Establishment of related products and services

Think about what other products or services might be related to your main product. For example, if you sell T-shirts, you may also have pants in your product line. Even if these products are different, consumers may associate them with each other and this can lead to brand confusion. It is therefore important to consider all related products and services.

Developing a search strategy

For successful TM registration, it is important to develop a search strategy that includes homonyms, synonyms, alternative spellings and translations of your name. Use question marks (?) for more precise searches. This will help you find not only identical brands, but also those that are similar to yours.

Searching

To conduct a TM search, you can use the Electronic Trademark Search Engine (TESS) on the official USPTO website. If your brand includes an image, be sure to search for logos and designs. When searching for a design, use Code Guide to find the desired design element in TESS.

If you are not confident in your abilities or need professional help, contact the lawyers at TaxFreeCorp. They will conduct a preliminary trademark search quickly, qualitatively and efficiently.

Conclusion

Registering a trademark is an important step for any business, especially if you are planning international expansion. This process requires attention to detail and legal expertise. By contacting TaxFreeCorp lawyers who specialize in trademark registration, you will have protection and peace of mind knowing that your brand is protected and ready for successful international growth.