How to go about Trademark Search?

Trademark searches can include results from every corner for trademark Protection Avenue and in scope for every mark, which is slightly similar to the trademark search. An appropriate trademark searching strategy will consider the following agenda’s.

• The nature of the goods/services that the mark covers,
• The nature of the mark,
• Applicant's allocation of resources,
• Timeline for bringing the mark to commercial domain.

Trademark searches are generally categorized as a "full search" or "knock-out search."

Knock-Out Trademark Search

A "knock-out search" refers to a search if the trademark is likely to fail in securing a Trademark Registration to be determined by the “National Trademark Register”.

Possibilities of Knock-Out Trademark Search

Knock-out searches cover both ‘applied-for marks’ that have registered as well as not registered. It also comprises applications of registered marks trademark that have been cancelled. This database will detect close matches or identical for a trademark that contains the ‘word mark’ in the question of subjected search.

Example: - It only includes searches for the mark itself and not close variants on the mark. Such as if the proposed mark were ‘PEN COMPANY’, the searcher would look for results for "Pen Company," but not "Pen Company" or "Pen Store"; even though these marks could come into conflict with “Pen Company” due to their closeness in meaning.

The diligence of Knock-Out Trademark Search

Knock-out Trademark searches provide the applicant with information determining the subjected trademark, which fails to qualify for further searching. It also specifies if a proposed mark is likely to conflict with the rest of the registered trademark or not. It signifies all the situations if it is useful to rely on that knowledge rather than experiencing additional costs to track the mark.

However, you must note that a knock-out search does not provide comprehensive results of a trademark's availability. As a result, a clear knock-out search cannot be relied on as a predictor of success at the request stage, nor can it guarantee the applications that the mark is not a risk. We perform knock-out trademark searching before introducing any full searches or trademark applications. Clients may also ask for knock-out searches on lists of prospective trademarks to constrict their search for a mark to pursue as a brand.

Full Search

A full search refers to searches in the trademark system that covers all avenues for trademark protection. It results in showing- how close they are to the mark, and searching firms using computer software. For each of the trademark search, the results cited are then compiled into a search report containing essential data. This will include marks that are close variations and identical to the subject mark that covers all related goods and services. Attorneys then review the results. It is because the Search reports are usually hundreds and hundreds of pages.

Possibilities of Full Search

Full searches are usually broken down into the country's data done on a trademark system basis. Nevertheless, some trademark systems provide protection such as the “Office for Harmonization in the Internal Offices” (OHIM) in the European Union across several countries. The Trademark search territory should go parallel to the countries or countries where the applicant is interested in securing his/her rights.

There may be numerous avenues for trademark protection within each country platforms would be included in the search. In India, trademark rights can come from national registrations, state registrations, and common law use. Therefore, the full search results include the National Register, state registers, and possible common law rights sources. Those include uses of the mark on the Internet, registered domain names, and business names.

The results reported will include marks that are identical to or similar to the mark for each trademark protection system that is the subject of the search. The search results will comprise marks containing all distinct words from the mark - if the mark in question is made up of multiple words.

The marks that are returned in the search results will include marks of unrelated goods & services, and cover related goods & services. The Lawyer/attorney reviewing the results will look for references that will contain the marks that are comparable or slightly comparable goods/services.

Design Mark Search

Design mark searches cover trademarks that include stylized font or a non-verbal graphic. These searches return results that show similar graphics for similar goods and/or services.

What is a Trademark Class?

A Trademark Class is an international standard under the World Intellectual Property Organization (WIPO) Nice Classification to classify goods and services. It got established by the Nice agreement (1957) defined by the Nice Classification (NCL), which was formed as part of the agreement, and gets updated every year.

Trademark Class Search list

A Trademark Class Search list comprises 45 classes, including goods and services. The Trademark Class list includes 11 classes for services and 34 classes for physical goods/products. Before searching and registering for a trademark, one needs to understand Trademark Class details while registering a Trademark for a product or service.

The Lists are as follows:-

• Trademark Class 1 is for Chemicals, Resins, and Plastics.
• Trademark Class 2 is for Varnishes, Paints, and Anti-corrosion substances
• Trademark Class 3 is for Cosmetics, Hair Oils and Lotions, and Cleaning Preparations
• Trademark Class 4 is for Greases, Lubricants, and Fuels
• Trademark Class 5 is for Pharmaceutical, Medical, and Sanitary Preparations
• Trademark Class 6 is for Goods of Metals and Alloys, Ironmongery and Hardware Products
• Trademark Class 7 is for equipment's and Machinery
• Trademark Class 8 is for Hand-operated Devices and Tools
• Trademark Class 9 is for Scientific, Electrical, and Technological Apparatus
• Trademark Class 10 is for Medical and Surgical Instruments and Apparatus
• Trademark Class 11 is for Heating, Cooling, Drying, and Refrigerating Apparatus
• Trademark Class 12 is for Land, Air, and Water Vehicles
• Trademark Class 13 is for Explosives and Firearms
• Trademark Class 14 is for Precious Metals and Stones, and Jewelry Items
• Trademark Class 15 is for Diverse Musical Instruments
• Trademark Class 16 is for Paper Goods, Stationery Products, and Printed Materials
• Trademark Class 17 is for Rubber and Plastic Goods and Products
• Trademark Class 18 is for Products made of Hides and Leathers
• Trademark Class 19 is for Various Non-Metallic Building Materials)
• Trademark Class 20 is for Furniture and other precious household Articles
• Trademark Class 21 is for Kitchen Utensils, Household Appliances, and Glass products
• Trademark Class 22 is for Ropes and Cordage, Fibers, and Stuffing materials
• Trademark Class 23 is for Threads and Yarns for uses in textiles
• Trademark Class 24 is for Textiles and Fabrics
• Trademark Class 25 is for Apparels and Clothing
• Trademark Class 26 is for Fringes and Fancy Goods and Products
• Trademark Class 27 is for Floor Coverings and Wall Hangings
• Trademark Class 28 is for Toys, Sporting, and Sports Goods
• Trademark Class 29 is for Meats and Processed Food Items
• Trademark Class 30 is for Auxiliary Food and Beverage Items
• Trademark Class 31 is for Agricultural and Horticultural Products
• Trademark Class 32 is for Beers, Light Beverages, and Fruit Juices
• Trademark Class 33 is for Wines and Spirits
• Trademark Class 34: is for Tobacco Products and Smokers' Articles
• Trademark Class 36 is for Insurance and Financial Services
• Trademark Class 37 is for Building, Construction and Repair Services
• Trademark Class 38 is for Telecommunication Services
• Trademark Class 39 is for Transportation and Storage Services
• Trademark Class 40 is for Treatment of Materials Services
• Trademark Class 41 is for Education and Entertainment Services
• Trademark Class 42 is for Computer, Scientific and Legal Services
• Trademark Class 43 is for Hotels and Restaurants Services
• Trademark Class 44: is for Medical, Beauty, and Agricultural Services
• Trademark Class 45 is for Personal and Social Services