Before filing for a trademark in any country you should carefully assess whether there are any similar or identical trademarks on identical or related goods and/or services that are already registered or are pending with earlier filing dates. While this may appear initially as a relatively simple task, the reality is that it is far more complicated.
While you can begin the process by searching for marks within the same classes of goods and services that you intend applying for, this will merely highlight some of the marks that may be cited against your application. This is because the trademark examining attorney (some countries label this role as “trademark examiner”) that examines your application will be searching for identical or similar trademarks on a much broader range of classes than just the classes than you intend to apply.
In fact over the entire spectrum of goods and services classes there are literally hundreds of possible crosses between classes that trademark examining attorneys need to carefully consider. It is therefore in your best interests to consult a trademark attorney to assist you throughout this process (refer the “Recommended Attorneys” menu option).
For example, your country’s IP Office is highly likely to view “medicinal tea” in class 5 as being similar in nature to, and sold in similar trade channels as, “tea” in class 30. Examples of other crosses between classes are:
“cosmetic skin care preparations” in class 3 Versus “pharmaceutical preparations for skin care” in class 5.
“building materials of metal” in class 6 Versus “building materials not of metal” in class 19.
“blinds of metal” in class 6 Versus “awnings of synthetic material” in class 22.
“agricultural implements, other than hand operated” in class 7 Versus “agricultural implements (hand tools)” in class 8.
“motor vehicles” in class 12 Versus “retail and wholesale of motor vehicles” in class 35.
“clothing” in class 25 Versus “clothing design” in class 42.
While the USPTO does not offer applicants any preliminary services that advise what marks (if any) will be cited prior to filing an application, there are some other jurisdictions around the world which do provide assistance in this area.
For example, IP Australia offer a “TM Headstart” service which provides an assessment of a trade mark application before it is filed. For further information:
https://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/how-to-apply-for-a-trade-mark/tm-headstart
South Africa’s Companies and Intellectual Property Commission offer a “Special Search” service. For further information:
http://www.cipc.co.za/index.php/find-enterprise-ip-informatr/sear/
The Intellectual Property Office of NZ provides a “Search and Preliminary advice service”. For further information:
https://www.iponz.govt.nz/about-ip/trade-marks/spa/
If you are applying in a jurisdiction that does not provide these pre-filing services, then it becomes even more important to employ the services of a trademark attorney. By proactively assessing the state of the trademarks Register in your particular field prior to actually filing, you immediately put yourself in a position of strength with significant savings in time, money and stress.
In another post (click here) we will show you step-by-step how you can search the trademarks Register for any conflicting identical or similar marks.
TMpedia recommends this trade mark law firm who has been personally endorsed by the Shark Tank’s Kevin O’Leary. They offer a money-back guarantee if your trade mark is not approved by the USPTO.