By Matthew Rubin
When conducting preliminary trademark screening on word searches, the directions that can be taken to narrow down high hit counts are numerous.
Some of the first strategic steps taken to focus searches known to be used by practitioners and seasoned screening users are: narrowing by international classes, goods/services, and status. Taking these first steps can often root out marks that are considered extraneous, but “search enlightenment” will only be achieved by better structured trademark search queries.
These four methods help me target the most appropriate trademark results:
- Narrow Results by Word Count – this has proven to be very useful. For example, if I am running a search for a one-word mark, I can try to limit mark results to those that are 3 words or less. This will eliminate many slogans and taglines that are using my searched mark differently.
- Disclaimer – Eliminating records that are disclaiming my mark can cut out those that are descriptive for my purposes, allowing me to focus on the records that my mark is the more dominant element.
- Exact Trademark – Looking for literally the exact trademark, you can successfully focus on only records where your mark appears alone without any phonetic variants, allowing you to see who owns this specific word(s) in a particular area of commerce.
- Next Letter Sounds – This step comes in useful for searching individual elements of two-word marks. For example, if you are retrieving high hit counts for the element BONES in the mark MONKEY BONES, try running trademark search queries that will contain words starting with the letter M or ending with a …KEY suffix before the word BONES.
These are just a few suggestions of the many techniques used, to help focus your search. Broadly speaking, think creatively when narrowing results, use multiple strategy steps, and always put yourself in the shoes of the consumer.*
About the Author
Matthew Rubin is Senior Manager of International Trademark Solutions at Corsearch, where he started as a Trademark Researcher in 2005. Matt has added to his expertise in multiple roles since, and is a respected thought leader in the trademark community. When not immersed in the world of intellectual property Matthew spends time with his family, reads and plays guitar.
*This is an editorial blog article, which does not contain legal or professional advice.
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