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Subject: Trademark Research FAQ v.1.4

This article was archived around: 21 May 2006 04:23:31 GMT

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Archive-name: internet/trademark-research-faq Posting-Frequency: monthly Last-modified: variable:date URL: http://spireproject.com Copyright: (c) 2000 David Novak Maintainer: David Novak <david@cn.net.au>
Trademark Research FAQ Welcome. This FAQ introduces the tools and concepts used in trademark research. We are covering the process of locating comparable trademarks - not the legal process of trademark protection. This FAQ resides at SpireProject.com/tmfaq.txt SpireProject.co.uk/tmfaq.txt and http://cn.net.au/tmfaq.txt This FAQ is just a small part of a much larger effort to help you with information research. The Spire Project is available as 3 website, mirrors, zip-file, and 3 other faqs. I have included here a text version of our trademark research webpage (spireproject.com/t_mark.htm). Enjoy, David Novak - david@cn.net.au The Spire Project : SpireProject.com, SpireProject.co.uk, Cn.net.au Trademark Research A patent protects your investment in an invention. Copyright covers your effort in a literary or artistic work. Trademarks protect your investment in identifying a product or service to the marketplace. Consider the striped IBM logo[1] (IP Australia trademark) and the slogan Coke is it[2] (USPTO trademark). A trademark is a word, phrase, symbol or combination identifying a product or service in the marketplace. This covers logos, marketing slogans, brand and trade names. In some circumstances, the trademark can cover colors or smells. Registered trademarks are trademarks granted additional legitimacy by the appropriate government agency. Common Law trademarks ('unregistered') are also protected, to a lesser degree. Both can be used to stop others using identical or similar marketing slogans, logos, brand and trade names. This article delves into the task of trademark research, that is, finding comparable trademarks. [1] Internet Registered Trademark Databases The first step in trademark research is to search the national registered trademark databases. These databases are freely searchable online: [3] IP Australia (www.ipaustralia.gov.au[4]) has the very user-friendly ATMOSS database online, and their more definitive (but nightmarish) Trade Marks Mainframe Database. Read the disclaimers by starting at IP Australia's trademark page[3], or jump directly to . [5] The US Patent and Trademark Office (USPTO[89]) provides this page on US Trademarks[6]. Read the description/disclaimers/options[7] for the US Trademark Database, or jump directly to the Boolean Search Page[5]. [8] The Canadian Intellectual Property Office CIPO (cipo.gc.ca[9]) delivers free online, the Canadian Trade-marks Database - all pending and registered trade-marks in Canada. Canada also publishes some of the best advice regarding trademarks. Start at the CIPO Trademark Page[10] or alternatively, jump directly to the Canadian Trade-marks Database[8]. Here is the database description[11]. [12] Further countries are preparing English access to registered trademarks, but we could not find more online at this time. To search, start with Rossco's WWW Corner which has a fine list of Patent Offices[12]. Australian Trademarks in More Detail IP Australia (www.ipaustralia.gov.au[4]) is the government organization responsible for Australian trademark concerns. Australia has about 800,000 registered trademarks, and access is freely available online through either the simple graphical interface of ATMOSS (Australian Trade Marks Online Search System), or through the slightly superior but difficult and non-graphical Trade Marks Mainframe Database (and the associated trademark viewer). [3] The ATMOSS database allows you to search using either the description of the trademark, or the trade mark number. It is returns similar trademarks, with trademark number, class, description, date, status, and perhaps an image of the trademark. [3] The [Australian] Trade Marks Mainframe Database is technically superior to ATMOSS as it is more current (about 3 days rather than about 2 weeks), has better field searching (by owners or phonetic) and includes references to correspondence regarding trademark registration. Unfortunately, the Trade Marks Mainframe Database is not graphical, and is probably not worth your time in learning. I am led to believe the superior field searching will gradually migrate to ATMOSS anyway. If you do wish to persevere, there is a manual online, visit one of the trademark libraries[13], or pay for a search (see below[14]). In most countries, but not all, registration of a trademark is not required to gain legal protection. Most trademarks are not registered, and enjoy considerable 'common law' legal protection under trade practices or fair dealing legislation. For this reason a trademark search must reach beyond the national registered trademark database, to search brand names, business names, and other sources of trademark usage. To quote the Trademark FAQ by the USPTO:A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. Frequently Asked Questions About Trademarks[15] (USPTO) Common Law Searching The premise of a search is to find possible sources of trademark similarity. We search sites where trademarks appear. Business names and trademarks are not the same, but are often used interchangeably. A business name search may give you leads to possible trademark similarities. Phone directories (white and yellow), and national business name registers list business names. The Internet is a fine site to search, especially since the search engines are prepared in a useful manner. I would search for word fragment in AltaVista, Debriefing, and Deja.com's usenet archive. See our articles: Searching the Web[97] and Discussion Groups[12]. With Altavista, be certain to surround words with quotes to "keep words together". Of course, this does not account for similar pronunciation, or the graphical elements of trademarks. Trademarks appear in trade magazines, but not often in the database formats, so this gives rise to the unenviable task of paging through likely magazines for similar trademark. [16] One uncertain resources is the Lycos: Pictures and Sounds[16] search facility. By indexing the alt=" " text from html pages, Lycos compiles a list of pictures on the web. A search for butterfly, for example, locates 100+ pictures labeled 'butterfly'. This might work to your benefit if the graphical element you are searching for is simple and distinct. Altavista[1] also has a similar service accessed by selecting 'images' before you search. Library Should you want to learn how trademarks are created, used and defended, these are the best sites to visit: Trademark References[17] by the Canadian Intellectual Property Office (CIPO) What's in a Name?[18] Using trade-marks as a business tool Glossary of Intellectual Property Terms Trade-mark FAQ Guide to Trade-marks All about Trademarks[19] by Gregory H. Guillot at www.ggmark.com (unusual clarity on trademark law) A Guide to Proper Trademark Use How are Marks Protected General Information Concerning Trademarks[6] by the USPTO Frequently Asked Questions About Trademarks[15] Trademark Libraries In the countries with internet access to the trademark database, the libraries could be said to be redundant - except as a source for ample and personal assistance with your search. In other countries these libraries may be able to assist with searching. [13] IP Australia has a patent & trademark library in each state capital[13]. These libraries provide free access to the ATMOSS database but also offers the much needed assistance for the troublesome Trade Marks Mainframe Database. [20] The US has The Patent and Trademark Depository Library Program (PTDL's[21]) - Here is a list of sites[20]. [22] In Canada, consider visiting Intellectual Property Links: Canadian[22] by CIPO for possible sources of trademark assistance. [23] In the UK, we presume the Patents Information Network[23] (PIN) provides trademark assistance, through the is no freely searchable database to UK trademarks. Start at the [UK] The Patent Office : trademark page[24] or this clickable map[23] to PIN sites. Commercial One of the most invaluable resources in serious trademark research is access to several of the very large commercial trademark databases. Commercial Trademark Databases Lexis-Nexis (www.lexis-nexis.com[51]) retails several trademark related databases. The Dialog Corporation (www.dialog.com[44]) retails a collection of TRADEMARKSCAN databases to European countries[25], Canada[26], and US (federal[27] & state[28]). These databases cover the registered patents for their respective countries. In addition to the database retailers and producers, there is a lively industry of trademark search assistance. There are numerous commercial firms on the Internet selling trademark services; much of this is little more than an ad for trademark related litigation. MicroPatent (www.micropat.com[29]) offers access to a proprietary trademark database. More information coming. Watching services are another possibility: These are not expensive but following the leads suggested will be. I can not yet advise you on a reliable trademark researcher. As a case in point, IP Australia provides a Business Names Applicant Search Service. A$40 buys you a search of the Australian registered trademark database by their trained staff. Contact IP Australia directly for this (Tel Au: 1300 651010) - they accept credit cards & fax/postal applications. Strategy Trademark law is designed to protect consumers from confusion. The law can work to protect business investment in brands & slogans, but only if the business behaves in particular ways which protect consumers from confusion: actively using the trademark, working to restrict the trademark from becoming generic, routinely searching for unauthorized use. For a very clear description of trademark use, and the responsibilities of trademark owners, read the short webpages A Guide to Proper Trademark Use[30], and How are Marks Protected[31] both by Gregory Guillot. Trademark Law has implications for searching: Just because a potentially conflicting trademark has been found does not mean it should concern you. It may be simple to show or argue that trademark ownership has lapsed and become abandoned unintentionally. A Guide to Proper Trademark Use[30] by Gregory H. GuillotA common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. The system may appear particularly legalistic, and it is. Recent Australian Trade Marks Office Decisions[32] information ultimately supplied by IP Australia, displays this vividly. However, much trademark activity is self-evident. In Australia, A$350 and a minimum of seven and a half months will usually earn you a registered trademark. Should you chose a trademark and find another has used it, you will most likely receive a 'cease & desist' letter and forfeit the value you may have invested in the trademark. This leads us to the importance of commercial trademark databases, watching services and other commercial services. Searching both prevents investment in an unusable trademark and inadvertent infringement by others - a responsibility of trademark owners. Trademark Classification A concise list of the 42 classes of the International Trademark Classification codes courtesy of Master-McNeil Inc[33]. WIPO is in charge of the full class description, currently The 7th edition of the Nice Classification[34], but this is rather lengthy. IP Australia has a simple search feature of classification terminology[35]. Trademarks are assigned to a particular class of product or service. A slogan or mark, for example, could be registered for use in movies but not computer products. The situation has changes recently but let us explain the difference down the page a bit. Originally, all goods and services were broken down into 42 classes. These classes are international divisions organized by WIPO (World Intellectual Property Organization), so are the same from country to country. Registered trademark documents will explain at length the types of products & services covered by a particular trademark. There is some bleeding between categories, and trademark examiners are unlikely to grant requests for nearly identical trademarks in similar categories, but class plays a role in granting trademarks. Recently it became necessary to list specifically the products or services to be covered, and the 42 classes have been expanded to a collection of specific sub-classes, which is reminiscent of patent classification, but far less useful. Class is important as trademarks are class-specific. You can search by class in certain registered trademark databases, but this is not particularly a good search technique: you are far too likely to miss a comparable trademark. Trademark Picture Descriptors Search Image Descriptors[36], by IP Australia, here abbreviated, needs basic words - simple like bird or butterfly. One difficulty with trademark searches is that all the tools apply best to words which appear in trademarks. What of the picture? The solution appears to be image descriptors. I am uncertain of the international nature of image descriptors, but at least in Australia, there is a standard set of image descriptors. IP Australia allows you to search for other trademarks with a particular picture element - irrespective of the words involved. But to do this, you must first select the appropriate image descriptor. Conclusion 3 Second Summary: Several registered trademark databases are free online. Registered trademark databases do not include common law trademarks. Search telephone directories, the internet & trade magazines to find common-law trademarks. Trademarks are just one element of intellectual property rights; patents, copyright, industrial design rights, circuit layout rights and plant breeders rights. As certain registered trademark databases are free online, some trademark research can be accomplished quite simply by the novice. Why search? 1_ To find existing trademarks similar to one you plan to register. 2_ To find existing trademarks similar to one you plan to use as a trademark. 3_ To see if a trademark is similar to a business name you consider using. 4_ To search for possible infringing trademarks. This is further explained in this help file[37] by IP Australia. Further Assistance [38][39] Misc.int-property has a lively usenet discussion on Intellectual Property. Access the newsgroup directly: misc.int-property[40] or search the past discussion through Deja.com's usenet archive[39]). [41] For a lively discussion of how trademark law affects Internet domain names, consider the trademarks-l mailing list at Washburn University (read the Scout Report description[41]). This article comes from The Spire Project. Advice welcome : email david@cn.net.au [1] http://pericles.ipaustralia.gov.au/atmoss/falcon_sub.show_tm_details?p_t mno=746083&p_ExtDisp=D [2] http://trademarks.uspto.gov/cgi-bin/ifetch4?ENG+REG+3+955902+0+0+712279+ F+18+23+1+MS%2fcoke [3] http://www.ipaustralia.gov.au/trademarks/T_srch.htm [4] http://www.ipaustralia.gov.au [5] http://trademarks.uspto.gov/access/search-bool.html [6] http://www.uspto.gov/web/menu/tm.html [7] http://www.uspto.gov/tmdb/index.html [8] http://strategis.ic.gc.ca/cgi-bin/trade-marks/search_e.pl [9] http://cipo.gc.ca [10] http://strategis.ic.gc.ca/sc_consu/trade-marks/engdoc/cover.html [11] http://strategis.ic.gc.ca/sc_consu/trade-marks/engdoc/help.html#contents [12] http://www.tip.net.au/~rossco/poffices.htm [13] http://www.ipaustralia.gov.au/about/A_contct.htm [14] http://spireproject.com/t_mark.html#3 [15] http://www.uspto.gov/web/offices/tac/tmfaq.htm [16] http://www.lycos.com/picturethis [17] http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_main-e.html [18] http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/whtname-e.html [19] http://www.ggmark.com [20] http://www.uspto.gov/go/ptdl/ptdlib_1.html [21] http://www.uspto.gov/go/ptdl/index.html [22] http://strategis.ic.gc.ca/sc_mrksv/cipo/links/links_can-e.html [23] http://www.bl.uk/services/sris/pinmenu.html [24] http://www.patent.gov.uk/dtrademk/index.html [25] http://library.dialog.com/bluesheets/html/bl0126.html#AB [26] http://library.dialog.com/bluesheets/html/bl0127.html#AB [27] http://library.dialog.com/bluesheets/html/bl0226.html#AB [28] http://library.dialog.com/bluesheets/html/bl0246.html#AB [29] http://www.micropat.com [30] http://www.ggmark.com/guide.html [31] http://www.ggmark.com/protect.html [32] http://www.austlii.edu.au/au/cases/cth/ATMO/recent-cases.html [33] http://www.naming.com/icclasses.html [34] http://www.wipo.int/eng/clssfctn/nice/about/index.htm [35] http://xeno.ipaustralia.gov.au/tmgoods.htm [36] http://xeno.ipaustralia.gov.au/device.htm [37] http://pericles.ipaustralia.gov.au/atmoss/falcon/help/help.html#WHY_SEAR CH [38] http://www.un.org/aroundworld/unics/home.htm [39] [40] news:misc.int-property [41] http://scout7.cs.wisc.edu/pages/00000138.html __________________________________________________ Copyright (c) 1999 by David Novak, all rights reserved. This FAQ may be posted to any USENET newsgroup, on-line service, website, or BBS as long as it is posted unaltered in its entirety including this copyright statement. This FAQ may not be included in commercial collections or compilations without express permission from the author. Permission requests to david@cn.net.au Legalities: Information supplied here is put forward in good faith and entirely without expressed or implied warranty or fitness for use. The contents of this faq is simply a collection of information gathered from many sources with little or no editorial or factual checking. Further, this information are the thoughts of the authors alone and may not represent the beliefs of Community Networking or any sponsoring organization. Should you find a mistake or claim copyright infringement, please contact David Novak of Community Networking. ----------------------------------- David Novak - david@cn.net.au