Trademark searching is important as it establishes whether your trademark is available for use and registration. Unfortunately trademark searching it is not as simple and easy as it sounds. This is largely due to the fact that trademark protection extends to similar marks and not just identical ones. The search therefore needs to include similar marks that cover similar goods or services. What is a similar mark? What is a similar product or service? These are technical issues best left to trademark professionals.
Analysing and interpreting search results often requires an in depth knowledge of trademark law and practice and is probably one of the most difficult tasks facing me on a daily basis. Furthermore accurate and complete search results ALWAYS require some form of human analysis and interpretation. As will be established below it is simply not possible for a fully automated trademark search facility to provide an accurate and reliable search result.
Once filed a trademark application is examined on 2 levels:
1. Absolute grounds
2. Relative grounds
Absolute grounds concern the inherent registrability of a mark. In order to be registrable a trademark must be distinctive. Trade marks cannot be registered if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods
- are specially protected emblems (such as national flags, coats of arms, hallmarks, official sign, and state emblems);
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- contrary to morality
- are deceptive or misleading. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
Automated trademark searches cannot and do not consider the inherent registrability of a trademark. It is impossible for them to do so. They fail on the very first level of the enquiry. To demonstrate this I searched the term ‘ballet shoes’ in class 25 (which covers footwear) on a widely used automated search facility. Unsurprisingly I received the following notification: ‘Good News – Ballet Shoes is probably available in class 25 – register & pay now’. I also searched the term ‘cricket bat’ in class 28 (for sporting equipment) and again I got the message ‘Good News – Cricket Bat is probably available in class 28 – register & pay now’.
The reality is that neither ‘ballet shoes’ or ‘cricket bat’ can function as a trademark let alone be registered as one. They are descriptive and non-distinctive terms which are not capable of registration. This is a classic illustration of the severe shortcomings associated free automated trademark searches.
The second level on which a trademark is examined concerns relative grounds. Essentially this looks at whether or not earlier conflicting marks exist (i.e. identical or similar marks for identical or similar goods or services). An automated search facility might be good at comparing the actual marks but that is where it stops unfortunately. They cannot and do not compare and analyse the goods or services covered by the earlier marks. Due to the nature of the trademark classification system only human analysis is possible in this regard. Considering that numerous different goods and services belong to the same class it is possible for identical or similar marks to be registered in the same class but covering different products or services.
For example sunglasses, mobile phones, and DVDs are all totally different products yet they all belong to class 9. Educational and entertainment services are totally different but they both belong too class 41. Legal services and social networking are very different but they both belong to class 45. Dentistry and hypnotherapy are totally different but they both belong to class 44. Accounting and advertising are total different services but they both belong to class 35. The above are just a handful of the hundreds of examples I can give.
Automated search services are only able to perform searches on a class by class basis. They cannot analyse the different good and services that fall within that particular class. This makes them very unreliable indeed but the average person who is checking if his mark is available knows no better and therefore does not complain. In my view, advising someone that their trademark is not available when in fact it is extremely unprofessional and negligent.
In summary then, and as illustrated above, automated trademark search software is flawed and unreliable. Extreme caution should be exercised when using these systems. Nothing can substitute a search conducted and analysed by a trademark professional.