38 Trademarks - Information by Field (Information Research)
Description
This article is from the Information Research FAQ, by David Novak david@spireproject.com with numerous contributions by others.
38 Trademarks - Information by Field (Information Research)
links and more at http://spireproject.com/t_mark.htm
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 and the slogan Coke is it. 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. Nothing in here pertains to the legal
aspects of trademark protection or infringement.
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) has the very user-friendly
ATMOSS database online, and their more definitive (but nightmarish)
Trade Marks Mainframe Database.
* The US Patent and Trademark Office (USPTO) provides US Trademarks
online. Read the description/disclaimers/options for the US Trademark
Database, or jump directly to the Boolean Search Page.
* The Canadian Intellectual Property Office CIPO (cipo.gc.ca) 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.
* Further countries are preparing English access to registered
trademarks. Start with Rossco's WWW Corner which has a fine list of
Patent Offices (http://www.pcug.org.au/~rossco/poffices.htm).
Australia
IP Australia (www.ipaustralia.gov.au) 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.
Common Law Searching
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 (USPTO)
(http://www.uspto.gov/web/offices/tac/tmfaq.htm)
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 and Discussion Groups.
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 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 has a similar service.
Should you want to learn how trademarks are created, used and defended,
consider these fine resources:
* Trademark References by the Canadian Intellectual Property Office
(CIPO), including: What's in a Name? Using trade-marks as a business
tool, Glossary of Intellectual Property Terms, Trade-mark FAQ and
Guide to Trade-marks (start at
http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_main-e.html)
* All about Trademarks by Gregory H. Guillot at http://www.ggmark.com
(unusual clarity on trademark law) including: A Guide to Proper
Trademark Use, How are Marks Protected
* General Information Concerning Trademarks by the USPTO
(http://www.uspto.gov/web/menu/tm.html) including: Frequently Asked
Questions about Trademarks.
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.
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). In Canada, consider visiting Intellectual
Property Links: Canadian by CIPO for possible sources of trademark
assistance. In the UK, we presume the Patents Information Network (PIN)
provides trademark assistance, through the is no freely searchable
database to UK trademarks.
Commercial Trademark Resources
One of the most invaluable resources in serious trademark research is
access to several of the very large commercial trademark databases.
Lexis-Nexis (www.lexis-nexis.com) retails several trademark related
databases.
The Dialog Corporation (www.dialog.com) retails a collection of
TRADEMARKSCAN databases to European countries, Canada, and US (federal
& state).
MicroPatent (www.micropat.com) offers access to a proprietary trademark
database. More information coming.
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.
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: +61 1300 651010) - they accept credit cards &
fax/postal applications.
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