There are thousands of financial institutions across North America who leave some of their most valuable assets virtually unprotected. We’re talking about their trademarks — things like names, logos, slogans, products, etc.
Here’s a step-by-step process for searching the United States Patent & Trademark Office’s online trademark database to see if a name is federally protected. It takes less than 5 minutes. Every financial institution with a halfway unique name or slogan should do this immediately.
Here’s a handy reference guide for all 45 of the USPTO’s “International Classes” in case you want to look up a trademark in another industry.
The most common mistakes financial institutions make happens when they change names. All too they make a costly error — one that can be easily avoided: they pick a new name that someone else in the financial industry has already federally trademarked. Time, energy, delays and headaches. All wasted. Lawyers and lawsuits. Very expensive.
If you’re considering a name change, you need to screen every name in the USPTO database using this tool first, before you fall in love with it. If another financial institution has a live trademark on that name, you’re basically out of luck, even if they’re on the opposite side of the continent.
Reality Check: If you’re looking for a name that’s available in the financial industry, good luck. Presently, there are 247,078 live trademarks in the financial industry. Most of the names you’re going to look-up at the USPTO website will already be taken. (When the URL allthegoodnamesaretaken.com is taken, you know it’s hard coming up with something new. This is where an experienced naming firm can help.)
If you want to read about pain and suffering, The Financial Brand has a number of cautionary tales about financial trademark pitfalls.
Bottom Line: If you think you’re safe because you’ve had your name for a hundred years, you’re wrong. If you think having to change names once is expensive, think about how much it costs to change names twice, after you lose a trademark lawsuit. And if you don’t think it’s important to trademark other assets like your ad slogans, think again. Bookmark this page. Someday it could save you a boatload of money.
- Do your due diligence. It’s so easy, there’s no excuse.
- While the USPTO’s online search tool is a great first step, it is no substitution for the guidance and insight of an experienced trademark attorney.
- Don’t forget to check your local phone book.
- And do a Google Search while you’re at it.
Step 1 – Go to the USPTO website
Step 2 – Search TM database (TESS)
- Click on the “Trademarks” tab.
- It will reveal subnav options.
- Click on option 3, “Search TM database.”
Step 3 – Select the New User Search Form
- When you get to the landing page of the USPTO’s Trademark Electronic Search System (TESS), click on the first option, “New User Form Search (Basic).”
- You can experiment with the other search forms later, but the basic search form is easy and works great.
Step 4 – Enter your search term
- Type your word into the provided field and hit the “Submit Query” button.
- In this example, we’re looking up trademarks for the word “Cornerstone.”
Step 5 – Review your results
- The USPTO will generate a full list of every trademark for companies, products and services in every industry, both active (LIVE) trademarks and DEAD ones.
- In this example, there are 447 live and dead trademarks for “Cornerstone.”
Step 6 – Refine your search
- To limit your search results to just trademarks in the financial industry, you have to modify your search. In the “Refine Search” field, add this: “and 036[IC].” What you’re doing is telling the system to just search trademarks in “International Class 036,” whish is the USPTO’s category for financial services.
- Note: For some reason, TESS adds parentheses and the word [COMB] in brackets to your search term. Add your refined search parameters after this.
- If you want to look at the complete list of the USPTO’s International Classes, you can check them out at the bottom of the page. They have categories for lubricants (004), rubber goods (017), and toys (028).
Step 7 – Review your refined search
- You used to have 447 records to sort through – too many!
Now you have only 124 – much more manageable.
- You can refine your search even further, because your 124 records include both LIVE (active) trademarks and DEAD (abandoned) trademarks.
Step 8 – Refine your search even further
- To only display LIVE (active) trademarks, add the following into the “Refine Search” field: “and LIVE[LD]”
Step 9 – Review your final results
- Now you’re looking at only LIVE trademarks for “Cornerstone” in the financial industry.
- You’ve cut your results from 447 in all industries, to 124 in just financial services, to now only 60 (that’s still a lot of “Cornerstones.”
Step 10 – Examine specific records
- You can click on any record to get greater details.
- This record says this specific “Cornerstone” focuses on real estate trust services, REITs, etc.
Here’s the USPTO’s complete list of International Classes [IC].
003 Cosmetics and Cleaning Preparations
004 Lubricants and Fuels
006 Metal Goods
008 Hand Tools
009 Electrical and Scientific Apparatus
010 Medical Apparatus
011 Environmental Control Apparatus
015 Musical Instruments
016 Paper Goods and Printed Matter
017 Rubber Goods
018 Leather Goods
019 Non-metallic Building Materials
020 Furniture and Articles Not Otherwise Classified
021 Housewares and Glass
022 Cordage and Fibers
023 Yarns and Threads
026 Fancy Goods
027 Floor Coverings
028 Toys and Sporting Goods
029 Meats and Processed Foods
030 Staple Foods
031 Natural Agricultural Products
032 Light Beverages
033 Wines and Spirits
034 Smokers’ Articles
035 Advertising and Business
036 Insurance and Financial
037 Construction and Repair
039 Transportation and Storage
040 Material Treatment
041 Education and Entertainment
042 Computer, Scientific and Legal
043 Hotels and Restaurants
044 Medical, Beauty and Agricultural