Trademark Research FAQ v.1.4
David Novak
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URL: http://spireproject.com
Copyright: (c) 2000 David Novak
Maintainer: David Novak <da...@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 - da...@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 da...@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 da...@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 - da...@cn.net.au