53 Trademark - Search Tactics (Information Research)
Description
This article is from the Information Research FAQ, by David Novak david@spireproject.com with numerous contributions by others.
53 Trademark - Search Tactics (Information Research)
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, and How are Marks Protected 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 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
(http://www.austlii.edu.au/au/cases/cth/ATMO/recent-cases.html),
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 choose 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. WIPO is in charge
of the full class description, currently The 7th edition of the Nice
Classification, but this is rather lengthy. IP Australia has a simple
search feature of classification terminology.
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, 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
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 by IP Australia.
Further Assistance
Misc.int-property has a lively usenet discussion on Intellectual
Property. Access the newsgroup directly: misc.int-property or search
the past discussion through Deja.com's usenet archive).
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
http://scout7.cs.wisc.edu/pages/00000138.html).
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