It is time to trademark. You started an online cocktail dresses business ‘So French So Fruity’ just last year and it is gaining momentum. To legally protect your name and to develop your brand, you have decided to apply for your trademark, to give you exclusive rights to use a ‘sign’.

What is ATMOSS?

Part of the trademarking process includes running a trademark search before you submit your trademark to IP Australia for approval. The reason for the search is to make sure that no one has already trademarked the same or a similar ‘sign’ to yours.

Another trademark may be an obstacle if:

  1. It is substantially identical or deceptively similar;
  2. Covers goods and services that are similar; and
  3. The trademark has an earlier application day than your application.

This is when you may be forced to face ATMOSS, the Australian Trade Marks Online Search System, to make sure your ‘sign’ is available. If LawPath is your friendly neighbourhood Spider-Man, ATMOSS is somewhat like Doctor Octopus: daunting, hidden and convoluted.

Fear not, here is a ‘how to’ guide with 5 simple steps for using ATMOSS.

1. Before you get started

Before confronting ATMOSS aka Doctor Octopus, you should take some time to practice your moves. Consider your brand. What is the main idea behind the ‘sign’? How is it distinctive? How would the name be pronounced by consumers? Is it likely to create confusion? Is the trademark likely to be seen as a variation?

2. Getting started with ATMOSS

If you go to the ATMOSS homepage, the first thing you will need to do is choose how to access the search engine: either as a user or as a guest. The only difference between them is how long you can save and view your search results. As a guest, you can add search results to a saved list but it will only be accessible during the current session. As a user, you can add search results to a saved list and return to it at a later date or email the list to your address.

You have now opened the basic search page. A search on ATMOSS is not as easy as ABC. It will not suffice to type in ‘So French So Chic’ in the first Word/Image box to complete a comprehensive search. Rather, you may have to attempt a series of searches to ensure that an identical or deceptively similar image or name to your brand has not been previously trademark.

You may like to consider the following category descriptions to conduct an appropriate trademark search.

3. Pick your class

There are 45 different classes that you may pick from. Classes 1-34 are goods; classes 34-45 are services. To determine what class your services or goods belong to, you may like to use IP Australia’s search engine or browse the list.

You should only pick the classes that refer to your core activity. For example, ‘So French So Fruity’ would not include class 35 for ‘advertising, business management, business administration, office functions’, although they may be part of its day to day workflow.

Tip: Ask yourself what page you would fall under in the Yellow Pages. ‘So French So Chic’ would not be in the business adminstration section but rather fashion.

Following the ‘Class/es’ rubrique, a drop down menu allows you to search either the ‘Single’ category you have selected or the ‘Associated’. An ‘Associated’ search may be more comprehensive although a ‘Single’ search would be an initial step if the number of results is too overwhelming.

4. Experiment with different search terms

ATMOSS has the gift of being (unnecessarily?) restrictive. In the search bar ‘Word/Image’ you cannot include spaces or punctuation. For example, you cannot enter ‘So French’ or ‘So-French’. This means you can only search for two words at a time.

To find ‘So French So Chic’, you would need search ‘So’ and ‘Chic’ and then, in a new search ‘So’ and ‘Fruity’.

To conduct a comprehensive search, you may need to experiment with different variables. Remember, you are not just looking for ‘identical signs’ but ‘deceptively similar signs’. You will need to consider variables of words and images. The drop down menus may be helpful for this. For example, the word ‘French’ may be too similar to ‘Frenchy’; you would then choose ‘Part Word’ to cover both ‘French’ and ‘Frenchy’. Be sure to also consider misspellings like ‘supa’ for ‘super.

5. Check the trademark status

For another trademark to be an obstacle, the trademark must still be valid. If the trademark’s status is registered or pending, it is likely to be an obstacle; if the trademark is refused, removed or never registered, it unlikely to be an obstacle.

You may like to use the ‘Trademark Status’ drop down menu to filter.

Keep in mind that even after conducting a thorough and comprehensive search and overcoming ATMOSS aka Doctor Octopus, your trademark may still be rejected. IP Australia will still need to examine your application.

You may like to consult a LawPath lawyer to ensure your search is comprehensive.

Unsure where to start? Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 600+ expert lawyers or to get answers to your legal questions.

Dominic Woolrych

Dominic is the CEO of LawPath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the 2015 Australian Legal Innovation Index.