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  • How to conduct a trademark search

    David Mink Legal Resources  

    Jan 13 2009

    Why would an Internet marketer want to know how to conduct a trademark search?

    Trademark Symbol

    Trademark Symbol

    1) So that Internet marketer does not register a domain name featuring someone else’s trademark, which domain may later be usurped by the trademark owner. ( A trademark owners will have substantive rights over a domain name owner in a domain name, which is identical or confusingly similar to the trademark owner’s trademark.)

    2) So that Internet marketer does not insert someone else’s trademarks within the Internet marketer’s meta tags, thereby exposing the Internet marketer to a possible law suit. (The general rule seems to be that if you use another company’s trademark within your meta tags for any deceptive purpose you most likely will lose the suit, however if you have some legitimate reason to use the trademark it most likely will be considered fair use and therefore permissible.)

    How to conduct a trademark search?

    Here is what most lawyers would do:

    A. The lawyer will ask the client: 1) what is the potential trademark that I am searching for? And 2) with what type of goods or services will you use the trademark?

    B. The lawyer will then conduct what is termed a “knockout search” – a search of federally registered trademarks. The lawyer will probably conduct this search via the PTO’s (patent and trademark office) Web based search service. Most lawyers will also search popular search engines to see if other websites reference the proposed trademark. It is also wise to conduct a search for other domain names which might be utilizing the trademark. I would recommend using Allwhois.com because it can search WHO IS databases for multiple domain registrars.

    C. If the knockout search does not turn up any identical matches, thereby failing to knock out the proposed trademark from contention, the attorney will most likely conduct a more thorough search by enlisting an outside trademark search service to conduct a more full search. Thomson & Thomson is a popular choice. This is also a fairly expensive service.

    This process will give you a good idea as to whether there will be a potential trademark conflict.

    • http://www.whdlaw.com/ViewTeamMember.aspx?ID=295 Deborah Spanic

      Nice post and good advice for internet marketers. All too often the importance of a trademark search is overlooked or left to the last minute, when it can often be too late to make a significant change. In addition to the defensive approach mentioned in the post, there is the other side which is taking a proactive approach to trademark registration. With the ability to file “intent-to-use” applications with the USPTO, companies can now file trademark applications and have time to decide whether or not they are going to use the mark.

    • http://www.erklaw.com Elizabeth Russell

      Agreed — this is good advice for all. It’s important to remember, too, that potential problems and conflicts lurk in marks that are not identical. It’s an error to assume that just because there are no “identical” marks, the proposed trademark is clear — and it’s really important to have that search report analyzed by a trademark attorney who knows the rules and can explain why a seemingly dissimilar mark can be a fatal obstacle.

    • http://www.dreamsystemsmedia.com/david-mink.php David Mink

      @Deborah – Thank you for commenting. The intent to use application is a great tool for businesses looking to buy time while keeping their options open.

    • http://www.dreamsystemsmedia.com/david-mink.php David Mink

      @Elizabeth – Thank you for raising the concern of trademark conflicts that are too similar, but not identical. I absolutely agree that you’re not home free just because the “knockout search” (useful for finding an identical trademark) did not knock the proposed trademark out of contention.

    • Pingback: Trademark Protections Using Trademark Forms, Trademark Search

    • http://www.larryiplaw.com/ Trademark Attorney

      Great post! As an FYI-once you have finished with your search and submitted for approval, it is important to note that a trademark examiner will review the application once set forth. Office Action documents can then be sent to you and are given a grace period of six months to reply.