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Trademark Clearance Search Including Translations
A full trademark clearance search can include a search for the translation of the word element of a
mark.
The trademark clearance search can be done by searching within the Translation Index search field,
The trademark clearance search can also be done by searching within the Translation search field, which is represented in the Free Form Search function of TESS as [TL].
The Combined Word Mark search field is the default search field for the New User section of TESS. The Combined Word Mark search field is a combination search of the search field of the Basic Index [BI], Translation Index [TI], Mark Punctuated [MP], and Translation [TL]. A search in the New User function is helpful because there is a search for the word and the translation simultaneously. Although a simple search in the New User function is not an extensive search, and can give varying results.
Amount of Missed Results By Not Including Translations
An example of a searches illustrate varying results for translation searches:
Sample searches showing missed results when not including translations
A trademark search may include a translation of the word element but it may not include a translation if a narrower search is done. Using the Free Form Search function in TESS for the sample search term of “city” as the translated element of the word mark in the filing date time frame of January 2018 to December 2022 can be done in two compared searches:
1) to mimic the New User function to include the Translation Index [TI] and the Translation [TL] field while also including the Basic Index [BI] and Mark Punctuated [MP]; and
2) to include only the Basic Index [BI] and Mark Punctuated [MP] fields.
So the two searches would be:
Search 1:
Equivalent to New User (Combined Word Mark) which is the Basic Index [BI], Mark Punctuated [MP],
Translation Index [TI], and Translation field [TL]
(city[BI] OR city[MP] OR city[TI] OR city[TL]) AND `FD > 20180000 < 20230000
Records: 6230
Search 2:
Searching Only in the Basic Index and Mark Punctuated, which misses any hits in the Translation Index or Translation field
(city[BI] OR city[MP]) AND `FD > 20180000 < 20230000
Records: 6067
When looking at the variation in results, it can be seen that there are 163 missing hits for translations when not searching for translations. Searching for the term with the Basic Index, Mark Punctuated, Translation Index, and Translation field, there were 6230 records in the sample search. Searching for the term with the Basic Index and Mark Punctuated field, and not the Translation Index or Translation field there were 6067 records. Therefore, 163 potential hits for translations were possibly missed, which may cause a conflict.
Difference in results of Translation Index Search Field and the Translation Search Field
Using the Free Form Search function in TESS for the sample search term of “city” as the translated
element of the word mark in the filing date time frame of January 2018 to December 2022 can be done in the different search fields of Translation Index [TI] or Translation [TL].
The results are similar.
For instance, with a search in the Translation Index [TI] gives 197 records and a search in Translation [TL] gives 196 records.
The searches used would be:
Translation Index [TI] search:
city[TI] AND `FD > 20180000 < 20230000
Records: 197
Translation field [TL] search:
city[TL] AND `FD > 20180000 < 20230000
Records: 196
Further Examples of Involving Translations
Example search of the term "book"
Translation Index Search Field vs. Translation Search Field
For the filing date time frame of January 2018 through December 2022, the sample search term “book” was used as the translated element of the word mark in a trademark clearance search. Although the searches were done independently - one search using the Translation Index [TI], the second search using the Translation field [TL] - the results were identical with 64 applications or registrations identified.
Searches Used:
book[TI] AND `FD > 20180000 < 20230000
result – 64
book[TL] AND `FD > 20180000 < 20230000
result - 64
Searching with a Translation or Searching Without a Translation
In the Free Form Search function in TESS, searching for the term “book” with the Basic Index [BI], Mark Punctuated [MP], Translation Index [TI], and Translation [TL] field resulted in 2794 applications or registrations with a possible conflict. By searching with only the Basic Index [BI] and Mark Punctuated [MP] as search fields, the results were 2735 records. In the simplified search only using the Basic Index [BI] and Mark Punctuated [MP] search fields, 59 translation registrations or applications were missed, which could be problematic if a conflict exists and these records were overlooked.
Searches Used:
(book[BI] OR book[MP] OR book[TI] OR book[TL]) AND `FD > 20180000 < 20230000
result – 2794
(book[BI] OR book[MP]) AND `FD > 20180000 < 20230000
result – 2735
Example search of the term "monster"
Translation Index Search Field vs. Translation Search Field
In this second sample search using “monster”, the same time frame of filings of January 2018 through December 2022 were used. In this sample, using the Translation Index [TI] and the Translation {TL] fields separately both resulted in the sample number of found records: 34.
Searches Used:
monster[TI] AND `FD > 20180000 < 20230000
result – 34
monster[TL] AND `FD > 20180000 < 20230000
result – 34
Searching with a Translation or Searching Without a Translation
The next search used the four search fields - the Basic Index [BI], Mark Punctuated [MP], Translation Index [TI], and Translation [TL] field – to identify 1285 applications or records during this time frame. This search yielded 23 more records than a Basic Index [BI] and Mark Punctuated [MP] field search, which resulted in 1262 records. Again, with this sample search, potential conflicts could arise in the application process if the trademark clearance search is not as extensive and one of these missed records creates a likelihood of confusion.
Searches Used:
(monster[BI] OR monster[MP] OR monster[TI] OR monster[TL]) AND `FD > 20180000 < 20230000
Result: 1285
(monster[BI] OR monster[MP]) AND `FD > 20180000 < 20230000
Result: 1262
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