Transcript DELVACCA thanks Flaster/Greenberg PC for their generous

DELVACCA, in conjunction with its Intellectual Property Committee,
presents
Tips and Traps of Trademark
Searching
DELVACCA thanks Flaster/Greenberg P.C. for their generous sponsorship of
this event.
On the Web at www.flastergreenberg.com
Tips and Traps of Trademark Searching
By:
Jordan A. LaVine, Flaster/Greenberg P.C.
Panelists: Alex H. Plache and Jordan A. LaVine
On the Web at www.flastergreenberg.com
Why do we Search?
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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?
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 Should
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Commercially Reasonable
Customary
Affirmation of Good Faith
Cost
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Procedure
 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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Timing
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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?
 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 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 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 Searches
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Design Codes
Colors
Smells
Sensory marks have no “drawing”
Description
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The Comprehensive Search
 Search Strategy
 Contents
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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 Trademarks
 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 Results
 Keep in mind who the client/owner/user of the mark
is/will be
 Analyze search strategy
 Likelihood of confusion
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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 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 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 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 Results
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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 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 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 Limitations
 Errors in the databases
 At the PTO
 In the State records
 Searching company
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U.S. delay
Foreign delay
Design marks
Assignments
“Gone but not forgotten”
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Reporting 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 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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Conclusions
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Keep up to date
Have a process
Communicate with marketing/the client
Increase value
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Thank You!
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