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From: [email protected] (David Novak)
Newsgroups: comp.patents,comp.answers,news.answers
Subject: Trademark Research FAQ v.1.1
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Date: 22 August 1999 00:00:00 GMT
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Summary: Trademark Research: guidance, advice & links.
Xref: senator-bedfellow.mit.edu comp.patents:1434 comp.answers:37445 news.answers:165269

Archive-name: internet/trademark-research-faq
Posting-Frequency: monthly
Last-modified: June 23 1999
URL: http://cn.net.au
Copyright: (c) 1999 David Novak
Maintainer: David Novak <[email protected]>

Trademark Research FAQ

The FAQ system is an efficient system to distribute peer-reviewed
information. Additionally, launching an FAQ is the best way to attract
the peer review so desired. (So comments please?)

I already write and maintain this as an article on Trademark Research as
part of the spire project (see http://cn.net.au/t_mark.htm) but I
strongly suspect this text version (http://cn.net.au/tmfaq.txt) will
have a wider, different audience than anything I publish on the web.
--David ([email protected])

-----------------------------------

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, the
process of locating trademarks which may be similar to one you have in
mind.

---------- Internet Resources ----------

Registered Trademark Databases

The first step in trademark research is to search the national
registered trademark databases. These databases are freely searchable
online:

IP Australia (www.ipaustralia.gov.au[3]) 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[4], or jump directly to .
The US Patent and Trademark Office (USPTO[5]) 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[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[11].
Here is the database description[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[13].

Australian Trademarks in More Detail

IP Australia (www.ipaustralia.gov.au[3]) 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).

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..
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[14], or pay for a search (see below[15]).

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[16] (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[17] and Discussion Groups[18]. 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.

One uncertain resources is the Lycos: Pictures and Sounds[19] 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[20] also has a similar service accessed by selecting 'images'
before you search.

---------- Library Resources ----------

Should you want to learn how trademarks are created, used and defended,
these are the best sites to visit: Trademark References[21] by the
Canadian Intellectual Property Office (CIPO)
What's in a Name?[22]�Using trade-marks as a business tool
Glossary of Intellectual Property Terms
Trade-mark FAQ
Guide to Trade-marks
All about Trademarks[23] 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[16]

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.

IP Australia has a patent & trademark library in each state capital[14].
These libraries provide free access to the ATMOSS database but also
offers the much needed assistance for the troublesome Trade Marks
Mainframe Database.

The US has The Patent and Trademark Depository Library Program
(PTDL's[24]) - Here is a list of sites[25], and a clickable map[26].

In Canada, consider visiting Intellectual Property Links: Canadian[27]
by CIPO for possible sources of trademark assistance.

In the UK, we presume the Patents Information Network[28] (PIN)
provides trademark assistance, through the is no freely searchable
database to UK trademarks. Start at the [UK] The Patent Office :
trademark page[29] or this clickable map[28] to PIN sites.

---------- Commercial Resources ----------

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[30]) retails several trademark related
databases.

The Dialog Corporation (www.dialog.com[31]) retails a collection of
TRADEMARKSCAN databases to European countries[32], Canada[33], and US
(federal[34] & state[35]). 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[36]) 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[37], and How are Marks Protected[38] 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[37] by Gregory H. Guillot

The system may appear particularly legalistic, and it is. Recent
Australian Trade Marks Office Decisions[39] 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 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.

A concise list of the 42 classes of the International Trademark
Classification Codes courtesy of "The Trademark Directory[40]". WIPO is
in charge of the full class description, currently The 7th edition of
the Nice Classification[41], but this is rather lengthy. IP Australia
has a simple search feature of classification terminology[42].
Trademark Picture Descriptors 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.

Search Image Descriptors[43], by IP Australia, here abbreviated, needs
basic words - simple like bird or butterfly.
---------- Conclusions ----------

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 the help file[44] by IP Australia.

Clearly we have not discussed how trademark law affects Internet domain
names. There is a lively discussion about this on the Internet. If you
are after specific information, consider the trademarks-l mailing list
at Washburn University (read the Scout Report description[45]).

For Questions, Misc.int-property has a lively usenet discussion on
Intellectual Property. Access the newsgroup directly:
misc.int-property[46] or search the past discussion through the
Deja.com's usenet archive[47]).

This article comes from The Spire Project,
a site devoted to information research.
Advice welcome : email [email protected]
(c)Copyright Community Networking. (http://cn.net.au)

--- footnotes for the above article ---
[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
[4] http://www.ipaustralia.gov.au/databases/tmarks/intro.htm
[5] http://www.uspto.gov
[6] http://www.uspto.gov/web/menu/tm.html
[7] http://www.uspto.gov/tmdb/index.html
[8] http://trademarks.uspto.gov/access/search-bool.html
[9] http://cipo.gc.ca
[10] http://strategis.ic.gc.ca/sc_consu/trade-marks/engdoc/cover.html
[11] http://strategis.ic.gc.ca/cgi-bin/trade-marks/search_e.pl
[12]
http://strategis.ic.gc.ca/sc_consu/trade-marks/engdoc/help.html#contents
[13] http://www.tip.net.au/~rossco/poffices.htm
[14] http://www.ipaustralia.gov.au/contact.htm
[15] http://cn.net.au/t_mark.html#3
[16] http://www.uspto.gov/web/offices/tac/tmfaq.htm
[17] http://cn.net.au/webpage.htm
[18] http://cn.net.au/discuss.htm
[19] http://www.lycos.com/picturethis
[20] http://altavista.com
[21] http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_main-e.html
[22] http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/whtname-e.html
[23] http://www.ggmark.com
[24] http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html
[25] http://www.uspto.gov/web/offices/ac/ido/ptdl/ptdlib.htm
[26] http://www.uspto.gov/web/offices/ac/ido/ptdl/map2.htm
[27] http://strategis.ic.gc.ca/sc_mrksv/cipo/links/links_can-e.html
[28] http://www.bl.uk/services/sris/pinmenu.html
[29] http://www.patent.gov.uk/dtrademk/index.html
[30] http://www.lexis-nexis.com
[31] http://www.dialog.com
[32] http://library.dialog.com/bluesheets/html/bl0126.html#AB
[33] http://library.dialog.com/bluesheets/html/bl0127.html#AB
[34] http://library.dialog.com/bluesheets/html/bl0226.html#AB
[35] http://library.dialog.com/bluesheets/html/bl0246.html#AB
[36] http://www.micropat.com
[37] http://www.ggmark.com/guide.html
[38] http://www.ggmark.com/protect.html
[39] http://www.austlii.edu.au/au/cases/cth/ATMO/recent-cases.html
[40] http://www.trademark.org/tmclass.html
[41] http://www.wipo.int/eng/clssfctn/nice/about/index.htm
[42] http://xeno.ipaustralia.gov.au/tmgoods.htm
[43] http://xeno.ipaustralia.gov.au/device.htm
[44]
http://pericles.ipaustralia.gov.au/atmoss/falcon/help/help.html#WHY_SEAR
CH
[45] http://scout7.cs.wisc.edu/pages/00000138.html
[46] news:misc.int-property
[47] __________________________________________________

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 [email protected]

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 - [email protected]