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Trademark Research FAQ v.1.4


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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>

See reader questions & answers on this topic! - Help others by sharing your knowledge
      	 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

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