on the web at delvacca, in conjunction with its intellectual property committee, presents tips and...
TRANSCRIPT
On the Web at www.flastergreenberg.com
DELVACCA, in conjunction with its Intellectual Property Committee, presents
Tips and Traps of Trademark SearchingDELVACCA thanks Flaster/Greenberg P.C. for their generous sponsorship of
this event.
On the Web at www.flastergreenberg.com
Tips and Traps of Trademark SearchingTips and Traps of Trademark Searching
By:Jordan A. LaVine, Flaster/Greenberg P.C.Panelists: Alex H. Plache and Jordan A. LaVine
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Why do we Search?Why do we Search?
Availability Registrability Enforceability Corporate Name Clearance Design – How Will it Look in Use? Major Product Introduction/Limited Purpose Is the Mark Already in Use? Advertising Use Only? Cease and Desist Issues Due Diligence for a Transaction
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Do We Have To?Do We Have To?
Failing to search does not inevitably result in a finding of bad faith, but is considered when evaluating the adoption of a mark – “willful indifference,” “intentional blindness,” “blind disregard.”
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Why You ShouldWhy You Should
Commercially Reasonable Customary Affirmation of Good Faith Cost
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ProcedureProcedure
Have a Process Ask Questions:
Verify Spelling Determine whether mark contains design element or
stylized lettering Is the mark already registered? Is the mark already in use? Does the mark have significance in the relevant trade
or any geographic significance? Are there any similar marks currently in use? What are the goods/services to be covered? What are the goods/services used for?
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TimingTiming
Communicate with marketing/the client
Turnaround Who will perform the search? Method of reporting the search
results
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What Type of Search?What Type of Search?
Internet Search Is an online search ever enough?
Preliminary Trademark Search “Knock out” Searches: Do you stop after a
“knock out”? US Comprehensive Search Design Searches Foreign Searches
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Where Do I SearchWhere Do I Search
USPTO.GOV Dialog/Saegis/Trademark.com CSC/CCH-Corsearch/Thomson
Compumark Determine strategy Define the search for the vendor U.S. or broader geographic scope
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Search StrategiesSearch Strategies
Keep your searching goal in mind Be creative; use phonetics Search homonyms, synonyms and
abbreviations Corrupted spelling Don’t ignore inactive references
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Design SearchesDesign Searches
Design Codes Colors Smells Sensory marks have no “drawing” Description
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The Comprehensive SearchThe Comprehensive Search
Search Strategy Contents
Federal applications/registrations State registrations Shepards citations Common law (unregistered uses) Domain Names Internet Uses Business Names
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Registering Domain Names and Registering Domain Names and TrademarksTrademarks
PTO says that you cannot register URLs (e.g., abc.com) unless also used as a mark (e.g., Amazon.com
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Analyzing Search ResultsAnalyzing Search Results
Keep in mind who the client/owner/user of the mark is/will be
Analyze search strategy Likelihood of confusion
Similarity of Marks Strength of Marks Similarity of Goods/Services Similarity of Channels of Trade Similarity of Purchasers/Users Purchaser/User Sophistication Evidence of Actual Confusion Intent in adopting the Mark
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Analyzing Search ResultsAnalyzing Search Results
Review goods and services for relationship to those searched
Dilution Mark must be “famous” to qualify for protection. Such marks are protected from dilution by blurring or
tarnishment. Dilution is the lessening of the capacity of a mark to
function as an identifier of a single source.
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Analyzing Search ResultsAnalyzing Search Results
Descriptiveness: does the mark merely describe the nature, purpose or characteristic of the product or service (e.g., CHAPSTICK for lip balm)?
Genericy: does the relevant public understand the term to indicate the genus of the goods/services (e.g., ELEVATOR or ASPIRIN)?
Functionality: is the mark a useful product feature (e.g., the shape of a coffee filter)?
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Analyzing Search ResultsAnalyzing Search Results
Deceptiveness A mark is deemed deceptive if it
communicates something about the product that is false and the statement is likely to be believed by purchasers and the false impression is material to purchase.
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Analyzing Search ResultsAnalyzing Search Results
Crowded field? Addition of housemark? Aggressiveness of trademark owner Abandoned applications and cancelled
registrations Domain Names Determine whether follow up
searches/investigations are needed Foreign Availability
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Madrid ProtocolMadrid Protocol
Longer period of uncertainty Even if the mark is being cleared in
the U.S., searching for International applications for extension of rights to the U.S. may be prudent
Consider follow-up WIPO searches should not replace
local country searches
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Investigating ReferencesInvestigating References
Resources Internet; Google; whois domain name
searches lexis/nexis; D&B; state corporation records private investigation services file wrappers (uspto.gov – “view documents”) Litigation/administrative proceedings in TTAB Phone calls
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Search LimitationsSearch Limitations
Errors in the databases At the PTO In the State records Searching company
U.S. delay Foreign delay Design marks Assignments “Gone but not forgotten”
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Reporting the Search ResultsReporting the Search Results
Oral – may be quicker and cheaper, but may be misinterpreted and may not be relied upon in litigation (no record).
Written – creates a record, may be relied upon, can explain new or difficult concepts, less chance of misinterpretation What should it look like?
Use of Search Guide
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The Art of the Search OpinionThe Art of the Search Opinion
Identify databases searched, scope and currency
List the most relevant references Reach a conclusion and give a recommendation % Likelihood of success Reasonable/Moderate business risk? Distinguish between use, registrability and
protectability Address the client’s plans – e.g., foreign plans?
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ConclusionsConclusions
Keep up to date Have a process Communicate with marketing/the
client Increase value
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Thank You!Thank You!