By Jeffrey H. Greene
A. What is a Trademark?
1. A trademark can be anything that indicates the source of a product or
service and distinguishes that product or service in the marketplace from
those of others.
2. Trademarks can be words, phrases, logos, smells, musical tones (the NBC
chimes), colors (the pink of fiberglass insulation), animation (the TriStar
Pictures Pegasus) the shape of a product or its container, or the distinctive
decorative features of a restaurant or store.
B. What Makes a Trademark "Good"?
1. "A mark is good if it communicates something about the product" -- There
is an age-old tension between trademark lawyers and business people. Each
approaches the notion of branding from a different perspective. A mark is
"good" to marketing personnel when it communicates to the purchaser what
the product or the nature of the product is. By contrast, trademark lawyers
warn clients regarding descriptive marks. The best marks to trademark
lawyers are those marks that have no other meaning or purpose whatsoever,
EXCEPT to indicate the source of the product or service at issue. KODAK has
no other meaning except as a trademark. As a result, KODAK belongs to the
strongest class of trademarks, i.e. the coined or fanciful marks.
a. Consult with business/marketing teams early.
C. The Spectrum of Trademark Distinctiveness.
1. The level of distinctiveness of a mark (inherent distinctiveness as well as
distinctiveness in the marketplace) determines the scope of protection to be
afforded to the mark. The stronger, or more distinctive, the mark, the broader
its scope of protection.
2. A mark will fall within one of the following five classifications:
a. GENERIC: Generic terms can never function as trademarks (e.g.,
ELEVATOR or ASPIRIN).
b. DESCRIPTIVE: A descriptive term can be protected as a trademark
once it acquires "secondary meaning." Surnames and geographic
terms are considered 'descriptive." as are laudatory terms (e.g.
CHAPSTICK for lip balm).
c. SUGGESTIVE: Marks that suggest, but not describe, the nature of
the product or service is an inherently strong mark (e.g.,
GREYHOUND for bus lines).
d. ARBITRARY: Marks that are arbitrary as applied to the goods are
even stronger marks than suggestive marks (e.g. APPLE for
e. FANCIFUL: The strongest marks are "made-up" fanciful terms
with no other meaning other than as a source identifier (e.g.,
KODAK for film).
3. How Crowded is the Pool? Even an inherently strong trademark will have a
limited scope of protection if it exists in a "crowded field" of similar marks.
D. Processes and Procedures for Handling Search Requests.
1. Receiving the search request.
2. Designate an individual or office to receive requests; it reduces duplication,
creates institutional memory and offers someone prepared with all the right
questions and answers.
3. Responsibilities of attorney obtaining instructions (the "Originator"):
a. Ask why the search is being conducted: Availability?
Registrability? Enforceability? Obtain from the "client" a full
understanding of the mark and goods and/or services to be
(i) Verify spelling of mark, including any punctuation, number of
(ii) Determine if mark contains a design element or stylized
(iii) Ask if the mark has been registered anywhere before (e.g., as a
(iv) Is there any geographic significance?
(v) Does the mark have any significance in the relevant trade and
industry for such goods/services?
(vi) Is the mark comprised of a foreign word or words? If so, what is
(vii) Is the mark already in use? If so, since when, to what extent
and where geographically?
(viii) Are there any marks of which client is aware which are similar?
b. What are the goods/services to be covered?
(i) What are the goods/services used for?
(ii) Are there goods/services for which the client may want to use
the mark in the future?
(iii) Are there goods/services with which the immediate
product/services are marketed or used?
(i) Are there other marks to be searched? If so, should such
searches be done concurrently or sequentially?
(ii) Scope of search.
(a) Federal only.
(b) Federal and state.
(d) Foreign searches.
(iii) Determine the "client's" wishes regarding turnaround, taking
into account scope of search. Comprehensive searches can be
expedited for an additional fee.
(iv) Who should do the search?
(v) Originator should determine the client's wishes regarding
method of reporting results so that searcher may prepare an
appropriate report regarding the search results.
E. The Comprehensive Search.
1. Searches are only as good as the searcher search strategy. A "thorough"
search is one that implements a creative and exhaustive search strategy and
utilizes resources appropriate to the product or service at issue and the
a. Select a company with which you are comfortable. The
format/quality of comprehensive searches can vary among
b. Contents of a comprehensive search: Comprehensive searches
can be ordered from several sources, including NameProtect,
Thompson & Thompson, CCH CorSearch, and several online
vendors. Originator should specify if there is a preference.
(a) Common law searching may be more limited than computerized
searching. Search providers tend to limit search strategies to
prefixes and suffixes and will not always search variations that may
be important. Be sure to review the search strategy used to
determine whether the search was adequately broad in scope. If the
provider has missed important aspects of the search, the provider
should be contacted to run the additional search strategy.
(i) Federal pending trademark applications;
(ii) Federal trademark registrations;
(iii) Abandoned applications/cancelled or expired registrations;
(iv) State trademark registrations;
(v) SHEPARDS citations;
(vi) Domain name data;
(vii) Common law (unregistered) uses (databases, Dun & Bradstreet,
Brands and Their Companies, Thomas Register, ABI, phone books,
(viii) Internet uses; and
(ix) Business names.
2. Analyzing the Results.
a. Keep in mind who the client/owner/user of the mark will be;
what the client's need is; and how risk averse the client is.
b. Identify marks sufficiently similar in sight, sound, and/or
meaning (e.g., CYCLONE and TORNADO). Do not just look for exact
c. Review goods/services for relationship to those searched.
d. Determine whether follow up searches/investigations are
needed. For the most pertinent marks, you may decide to get the
application history/file wrapper; conduct an Internet search; secure
corporate and financial reports, etc.
(i) Relevant state references almost always require additional
investigation: most state applications are not examined; a lot of
deadwood; and rules differ in each state.
(ii) Investigation resources: yourself; the client; and an outside
investigator such as the search firm.
F. Searching Strategies.
a. TrademarkScan (through Dialog/Saegis): Databases for U.S.
(Federal and state), several national databases and databases for
European Community and International Trademarks.
b. Lexis offers several trademark-related databases.
c. Examples of additional international and national trademark
(i) United States: Boolean search capability, www.uspto.gov.
(ii) International Registrations: WIPO's "Madrid Express" Database
covering pending applications, registrations, and extensions can be
found at www.wipo.int/madrid/en/madrid_express.htm.
(iii) Australia: the ATMOSS database is available online.
www.ipaustralia.gov.au. IP Australia also enables searching images.
(iv) Canada: Canadian Trade-Marks Database available through
(v) Hungary: free searching of English language trademark records
from 1996 on. www.hpo.hu.
d. There are other national trademark resources. There is an
international intellectual property resource at
http://www.llrx.com/features/iplaw2.htm. This resource is
e. Internet-based searchable databases and search services.
(a) MicroPatent has a proprietary, searchable trademark database,
(b) Lycos Multimedia: searching for pictures (audio or video).
(c) Betterwhois: search for domain names through a fairly
comprehensive database, www.betterwhois.com
(d) Netcraft allows you to search for character strings in domain
2. How do I Search?
a. Search Strategy.
(i) Keep in mind what you should be finding during your search.
The issues are likelihood of confusion and dilution.
(ii) Be creative. Do not limit to exact spelling, use phonetics. Be
(iii) When searching a mark with "corrupted" spelling, always search
the correct grammatical spelling.
(iv) Where appropriate, consider searching for synonyms and/or
(v) Search abbreviations when appropriate (e.g. "MOM" and
(vi) Be mindful of changes in spelling due to pluralization.
(vii) Look at active/inactive marks.
(a) Inactive marks may contain valuable information.
(b) When limiting search to active marks, consider reviewing
inactive marks for dead-ons or other pertinent inactive references.
(a) Search key words for goods/services without limitation to
(b) Search class(es) containing related services and include class(es)
for related goods when practicable.
b. If you encounter a knock-out reference, do you stop searching?
3. Search Limitations.
a. Errors in the databases,
(ii) State records.
(iii) Searching company.
b. U.S. "blind spot" -- up to six-week delay from filing application in PTO
until information is available for searching.
c. Foreign "blind spot" -- foreign entity filing under the Paris Convention
has six months relation back priority (15 U.S.C. 1126(d)), and if a foreign
entity files a Madrid application at the end of the six months priority
period, as many as eight months may elapse after filing of the basic
application before information on U.S. extension application is made
available to the PTO.
d. Errors in search process.
e. Design marks.
f. Assignments may not be recorded.
g. "Gone but not forgotten" -- may have no use for years, but may have
intent to resume use. See, e.g. Exxon Corp. v. Humble Exploration Co.
Inc., 695 F.2d 96 (5th Cir. 1983), after remand, 592 F. Supp. 1225 (N.D.
Tex. 1984); and Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037
(2d Cir. 1980).
h. In the U.S. and in other "common, law" countries (countries that
recognize unregistered rights) there is no requirement to register a mark.
4. Madrid Protocol.
a. The period of uncertainty or "blind spot" (i.e., the delay in
reporting/processing trademark filings which results in searching
uncertainty) has been increased.
b. Even if the client is seeking to clear a mark in the U.S. only,
searching the WIPO online records
(www.wipo.int/madrid/en/madrid_express.htm) or subscribing to a
CD-based service called ROMARIN, which would reveal applications
for extension of rights to the U.S. is a prudent addition, as it
lessens the uncertainty (WIPO must place application information in
its system within three (3) days of receipt of same). The PTO would
normally receive from the International Bureau information
regarding applications for extension of rights to the U.S. much
c. Consider conducting follow-up searches of the Federal and
International Registers to locate conflicting Madrid filings with
priority. These searches should be done about eight months after
filing in order to avoid the "blind spot."
d. For international trademark screening, WIPO searches should not
replace searches through the country registries. Moreover, the
WIPO Gazette is the only official publication for International
G. The Opinion.
1. A search opinion for the same mark for the same services may differ in
conclusion and tone from client to client. Examples of variables are: risk
aversion; commitment (already using); intended use (long time user vs. client
who will use the mark for 6 months as a seasonal brand, and then dump it).
a. Oral Opinions.
(1) Some clients prefer it;
(2) Less expense; and
(1) Can be misinterpreted;
(2) Clients may only hear what they want to hear;
(3) May not be able to rely upon the advice in litigation;
(4) Provides more opportunity for disagreement; and
(5) No record created.
b. Written Opinions.
(a) Creates a record;
(b) Can be relied upon -- but note three part test:
(1) Must seek advice before using mark;
(2) Must adequately disclose details of proposed use;
(3) Must act in accordance with counsel's advice. Cuisinarts, Inc. v.
Robot-Coupe Int's Corp., 580 F. Supp. 634, 638 (S.D.N.Y. 1984).
See Berkshire Fashions. Inc. v. Sara Lee Corp., 729 F. Supp. 21, 22
(S.D.N.Y. 1990); Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d
1502, 1508 (11th Cir. 1985), cert. denied, 475 U.S. 1013 (1986);
Parenting Unlimited Inc. v. Columbia Pictures Television, Inc., 743
F.Supp. 221, 230 (S.D.N.Y. 1990);
(c) Allows for communication without distortion;
(d) Helps explain new or difficult concepts; and
(e) Aids the opinion writer -- forced to think the advice through
c. Content of Opinions.
(i) Give the client advice and a recommendation.
(ii) Reach a conclusion and provide constructive/creative
(iii) Distinguish between use/registrability/protectibility.
(a) Keep declaration (not application) in mind -- may be fraud if
signed with knowledge of another's superior right to the mark as
applied to the goods/services. Fraud test is clear and convincing
evidence. V&V Food Products Inc. v. Cacique Cheese Co., 683 F.
Supp. 662 (N.D. Ill. 1988).
(b) Dead wood may prevent/delay registration, but should not
(c) Client does not have to wait for registration to commence use.
(iv) A mark may be available for use and registrable but ultimately
not be protectible. See Miller Brewing Co. v. Schlitz Brewing Co.,
203 U.S.P.Q. 642 (7th Cir. 1979) together with In re Miller, 226
U.S.P.Q. 666 (TTAB 1985).
H. Domain Names.
1. A mark may available for use and registration as a mark, but the .com (or
another) domain name many already be taken.
2. Is a domain name being used as a mark in content? Is there use analogous
to trademark use?
3. Are domain names capable of functioning as a mark?
I. Foreign Availability.
1. Know your client's business and plans.
2. If the mark is available for use and registration in the U.S., but not in
Europe, does that impact on the overall value of the mark?
J. Legal Obligation.
1. There is no legal requirement to search. Rosso and Mastracco Inc. v. Giant
Food. Inc., 720 F.2d 1263 (Fed. Cir. 1983); Money Store v. Harriscorp Finance
Inc., 689 F.2d 666 (7th Cir. 1982); V&V Food Products, Inc. v. Cacique Cheese
Co., 683 F.Supp. 662 (N.D. Ill. 1988). International Star Class Yacht Racing
Ass'n. v. Tommy Hilfiger U.S.A., Inc., 1999 W.L. 108739 (S.D.N.Y. 1999).
Failure to conduct a search does not constitute bad faith as a matter of law.
Jeri-Jo Knitwear, Inc. v. Club Italia, Inc., No. 98 Civ. 4270. 1999 WL 500146 at
*4 (S.D.N.Y. July 15, 1999).
2. However, failure to conduct a search, taken in conjunction with other facts,
can weigh "significantly" in favor of a finding of bad faith. Id.; see also First
Jewellery Co. of Canada v. Internet Shopping Network LLC, 53 U.S.P.Q.2d
1858. 4 1843 (S.D.N.Y. 2000) (failure to conduct the "very obvious and simple
precaution of a trademark search is relevant to the issue of good faith).
3. Failure to react to the search results appropriately may result in a finding of
bad faith. Bear USA, Inc. v. Kim, 71 F. Supp.2d 237 (S.D.N.Y.):
"Defendant's actions upon learning of a prior user's rights in a mark can be an
important indicator of good or bad faith. When a defendant faced with such
information neither fully explore(s) others' rights to [the mark in question] nor
cease(s) its infringing behavior, that defendant cannot lay claim to a good faith
belief that it was not infringing. [FN 108]
International Star Class Yacht Racing Ass'n v. Tommy Hilfiger, U.S.A., 80 F.3d
749,754 (2d Cir. 1996).
Of course, it is not Bing Chuan's failure to accurately to predict another's
rights in a trademark which suggests bad faith. As a judge in this court has
pointed out, courts have disagreed with counsel's opinion in trademark
infringement matters, but not found defendants to have acted in bad faith [FN
109]. Instead, it is the failure to address the issue at all that is telling."
4. Failure to seek advice of counsel may imply intent to infringe. Conopco Inc.
v. May Dept. Stores Co., 784 F. Supp. 648 (E.D. Mo. 1992); Ambrit v. Kraft Inc.,
1 U.S.P.Q.2d 1611 (11th Cir. 1986) cert. denied 481 U.S. 1041 (1987).
- Search and knowledge of plaintiff's mark is relevant to good faith. W.W.W.
Pharmaceutical Co. v. Gillette Co., 808 F.Supp. 1013 (S.D.N.Y. 1993), aff'd,
984 F.2d 567 (2d Cir. 1993).
- The search report is discoverable; the advice may not be. Amerace Corp. v.
USM Corp., 183 U.S.P.Q. 506 (T.T.A.B. 1974); 8 in 1 Pet Products, Inc. v. Swift
& Co., 218 F. Supp. 253, 137 U.S.P.Q. 777 (S.D.N.Y. 1963)
5. If a client chooses not to conduct a search, it is prudent for counsel to note
such fact in writing, e.g., "This will confirm that you wish to proceed with an
application and have not instructed us to conduct a search."
Jeffrey H. Greene, Esq.
Why Do We Search?
- 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
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,"
Why You Should
- Commercially Reasonable - Customary
- Affirmation of Good Faith
- 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 any significance in the relevant trade or any geographic
- Are there any similar marks currently in use?
- What are the goods/services to be covered?
- What are the goods/services used for?
- Communicate with marketing/the client
- Who will perform the search?
- Method of reporting the search results
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
Where Do I Search?
- Name Protect/CCH-Corsearch/T&T
- Determine strategy
- Define the search for the vendor
- U.S. or broader geographic scope
- Keep your searching goal in mind
- Be creative; use phonetics
- Search homonyms, synonyms and abbreviations
- Corrupted spelling
- Don't ignore inactive references
- Design Codes
- Sensory marks have no "drawing"
The Comprehensive Search
- Search strategy
- Federal applications/registrations
- State registrations
- Shepards citations
- Common law (unregistered uses)
- Domain names
- Internet uses
- Business names
Registering Domain Names and Trademarks
- PTO says that you cannot register URLs (e.g., abc.com) unless also used as a mark (e.g.,
Analyzing Search Results
- Keep in mind who the client/owner/user of the mark is/will be
- Analyze search strategy
- Likelihood of confusion
- 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
Analyzing Search Results
- Review goods and services for relationship to those searched
- Mark must be "famous" to qualify for protection.
- Such mark is 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.
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)?
Analyzing Search Results
- 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 the purchase.
Analyzing Search Results
- 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
- 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
- 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
- Errors in the databases
- At the PTO
- In the State records
- Searching company
- U.S. delay
- Foreign delay
- Design marks
- "Gone but not forgotten"
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
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?
- Keep up to date
- Have a process
- Communicate with marketing/the client
- Increase value