Trademark Issue Overview
Fictitious Name Research
How does TradeMark Express® compare to a County fictitious name search?
Fictitious name research is typically conducted only in your local County. Only LEXIS-NEXIS offers a compiled searchable database of over 3300 Counties in the United States to search on. This single database is just one of the 400 databases TradeMark Express® uses to search its clients’ trade names. Searching your own single County is fruitless because goods and services are not listed, thus you can’t compare trade names. Also, having your application accepted by your County means absolutely nothing because it is always subject to legal availability, that you are expected, but not required, to search before applying.
How does TradeMark Express® compare to an Internet search?
The Internet is a good place to start but it is not close to being comprehensive. Some research may be done on existing Federal trademarks and common law use. There are no State trademark databases to search upon. We recommend a free TradeMark Express® consultation after you do your own research. We want to make sure that you do not over react to a trade name that does not affect you, or under react to a trade name that does..
Are low priced preliminary trade name searches worth the savings?
No, we think preliminary searches are a waste of time and money for these reasons :
Comprehensive searches always cost more than preliminary searches because of the depth and breadth of the over 400 databases that must be searched, at a cost of $1 to $5 per minute wholesale.
Preliminary searches are just that – a cursory look as to whether a trade name is used or not. This type of search is never offered with analysis, because of the low price.
So, if you order a comprehensive search you should have a trademark attorney analyze it. If clear, you still need a comprehensive search because most names are affected by similarities in sound, appearance and meaning which do not appear until you conduct a comprehensive search. TradeMark Express® offers its comprehensive research in a step-by-step approach, with free analysis and free attorneys – to save its clients the most time and money while offering an extremely high level of service.
Should I search my name at the USPTO web site?
We recommend researching the name with the USPTO because you may find another mark that affects you. However, nothing is worse than giving up on a trade name that is actually clear, except going ahead on a trade name that is actually blocked, because you didn’t do a deep enough search! We offer free consultations. Please call us to discuss any apparent hits you may find!
However, under no circumstance, whatsoever should you assume a basic 2 minute USPTO TESS search be considered legally comprehensive. It is merely an indicator; the research is not cross-referenced for similarities in sound, appearance and meaning. You have a LOT more research to do to KNOW you are LEGALLY CLEAR. A TESS search is really just a 1% search of all you need. You need an in depth search of the rest of the 2 million Federal trademarks, 1 million State trademarks and 13 million Common Law, (non-trademarks, but 1st use right holders), uses too!
THE USPTO SAYS TO DO A COMPREHENSIVE SEARCH!
What TradeMark Express Does to Help Avoid Potential Trademark Pitfalls
THIS COPY IS DIRECTLY FROM THE USPTO – See: http://www.uspto.gov/trademarks/basics/private_attorney.jsp
“A private trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue. While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, a private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement.”
How does TradeMark Express® compare to the USPTO web site?
The USPTO only encompasses 2 million of the possible 16 million trade names that exist. The USPTO web site does not contain any State trademark records or common law records, which are essential to comprehensive research. Checking only the USPTO means that you have missed 88% of information that may affect your legal use of your name!
Comprehensive research checks billions of records for similarities in sound, appearance and meaning. There is no way all this information can be found on the Internet, at law libraries, etc. Some time spent researching a proposed trade name by yourself is wise, but nothing supplants a comprehensive search. In the end, you will still need to conclude your research with a comprehensive search!
TradeMark Express® research specialists are trained to search hundreds of trademark, business and periodic databases, including literally 10’s of billions of records to find a possible conflict or similarity. Similarities may cause infringement as well as conflicts. Any research short of a comprehensive search is a waste of your time and money.
Does the USPTO do its own search after I apply for a trademark?
Yes, after 3.5 months, the USPTO will search your trade name or logo design, on its own federal trademark database.
The USPTO does not conduct a State trademark or common law search for you. So, if you don’t do your legal research before filing, and ideally before actual use, then you may be blocked when the USPTO does its own search – or, worse yet, you may achieve a federal trademark but be unable to use it when the blocking entity finds you. Your trademark will be worthless if someone has prior first use common law rights or State trademark rights.
The USPTO may refuse to register your mark on numerous grounds. Please call us to discuss your situation. The most common grounds for refusal are :
The USPTO conducts a search for conflicting marks as part of the official examination of an application after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict or similarity between the mark in the application and a mark that is either registered or pending in the USPTO.
The principal factors considered in reaching a decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, marks do not have to be identical or the goods and service the same. It is sufficient if the marks are similar and the goods and or services are related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.
When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion if the earlier-filed application becomes registered.
The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.
The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.
A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.
The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.
In general, the examining attorney will refuse registration if the applied for mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.
TradeMark Express® vs. Other Search Firms
How does TradeMark Express® compare to other search firms?
radeMark Express® is well experienced! Since 1992, we have conducted over 25,000 trade name searches for our clients. We have offered hundreds of thousands of free consultations. We are an industry leader for trademark research!
TradeMark Express® prides itself on the additional services and benefits we offer to our clients. Comprehensive research is, of course, the most important factor when choosing a search firm. However, there are other significant factors.
Time is of the essence in regard to searching and filing a trademark. A clear trade name today may not be legally available next month. TradeMark Express® offers same-day service (next day if ordered after 2PM EST) to all its clients at no extra charge. Many competitors take a few days, or a week, often times charging extra for same-day service.
TradeMark Express® searches the most up-to-date professional databases available – on LEXIS-NEXIS and Dialog. Our research team looks for exact conflicts and similarities. The USPTO could reject an application if one mark is confusingly similar to another. This is determined by what is called the SAM rule – Sound, Appearance & Meaning.
If the United States Federal & State trademark search is blocked with a conflict and/or similarity, TradeMark Express® will place a hold on the National common law search until the trademark search is found to be clear. If the conflict and/or similarity prove to be a problem, there is no point in continuing the National common law search. We have saved our clients millions of dollars by not doing extra research that is unneeded!
An important aspect of comprehensive research lies within the analysis. Our research specialists are trained to analyze each search based on sound, appearance & meaning as well as International Class, goods/services and Industry. Because TradeMark Express® offers this service as part of the research package, it means that our clients need not take their research elsewhere for interpretation. Having a trademark attorney perform your analysis unnecessarily adds days as well as cost to the task.
In the event that there are legal questions concerning the availability of your trade name, TradeMark Express® provides trademark attorneys at no extra cost (or nominal charge, depending on the attorney) to help you decide if a conflict or similarity is too close or is not a legal problem.
Corporate research in only one State will unlikely find any legal trade name problems. In this way, it is like a county fictitious name search – extremely limited in that it will cover only other corporations and not any sole proprietorships or partnerships, plus it misses all the other trade name uses from outside the State you are incorporating in, maybe even from your own State!
Is incorporating a name the same as filing for a trademark?
Not by any means. Incorporating is simply the type of entity a business can be; there are also sole proprietorships, partnerships, trusts and limited liability filings.
Being incorporated offers you no more – or no less rights to your name than any other entity type. There is still the question of any other entity having first use common law or State or Federal trademark rights – prior to your incorporation.
Using a name in intrastate or interstate commerce does gain an entity common law rights within their specific geographic trade area (only if there is no prior ownership and/or usage) but does not gain nationwide common law or trademark protection.
ALWAYS do your trademark and common law searches BEFORE incorporation! It is a waste of time, effort and money to have to redo your corporation papers under a new legally clear name.
Copyright protection is extended to “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:
- literary works
- Musical works, including any accompanying words
- Dramatic works, including any accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
These categories should be viewed broadly. For example, computer programs and most “compilations” may be registered as “literary works”, maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”
No. Trade names, slogans, logo designs, etc that are used to identify a business can only be trademarked.
Yes, only if they are part of a series. A single book title and its contents must be copyrighted. A trademark search still needs to be done, because the name may be trademarked.
Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.
In the case of works made for hire, the employer and not the employee is considered to be the author. Section 101 of the copyright law defines a “work made for hire” as :
- A work prepared by an employee within the scope of his or her employment
- A work specially ordered or commissioned for use as : a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test and an atlas.
If the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary.
Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective work as a whole and vests initially with the author of the contribution.
- Mere ownership of a book, manuscript, painting, or any other copy or phto record does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.
- Minors may claim copyright, but state laws may regulate the business dealings involving copyrights owned by minors. For information on relevant state laws, consult an attorney.
Several categories of material are generally not eligible for federal copyright protection. These include among others :
Works that have not been fixed in a tangible form of expression. For example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded.
Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents.
Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration.
Works consisting entirely of information that is common property and containing no original authorship. For example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources.
For more information about copyrights, Go here.
Searching for trademark availability is NOT the same as searching to register a domain name address. A dot com address search, for example, will focus on exact spellings, with no consideration given to similar names or use with related products and services.
Mistakenly, many times a new company will assume its trade name is legally clear merely because it was able to purchase a dot com or other domain extended name.
If a domain is later discovered to be taken after you have obtained a trademark, then you may open an arbitration hearing with ICANN to seize the new domain name. Trademark law is based upon conflicts and similarities, thus any infringing domain name may be acquired.
Should dot com, dot net or dot edu, or any other domain name extension be included with the name for Federal trademark registration?
The extension adds nothing to your name. The USPTO will only register the trade name; if the extension is submitted, the applicant will have to disclaim exclusive rights to it. TradeMark Express® recommends registering just the name minus the extension, because you gain flexibility in using it with or without the extension.
Does my domain name have protection over a registered trademark or a prior common law usage?
No, prior trademarks and common law usage, even close similarities have substantive rights over a new domain name. Network Solutions is the organization responsible for registering Internet domain names and do have a domain name dispute policy.
In summary :
- Network Solutions is shifting the burden of researching possible trademark infringement to the domain name registrant.
- ICANN will arbiter or resolve disputes. They will take steps toward resolution, and have outlined a procedure complainants must follow.
- Prove the complainant owned the trademark prior to creation of domain name.
- Prove the complainant notified the registrant of possible infringement.
- The trademark must match exactly or be very close to the domain name, (not counting the extensions like dot com or dot edu).
- If the domain registrant cannot prove prior trademark registration to that of the complainants, he/she must relinquish the name, choose a new name or file a lawsuit.
- If the domain registrant does not file a lawsuit, the name will be suspended and no one can use it until proof of resolution has been submitted to ICANN.
- If the complainant files a lawsuit without going through the procedures above, the status of the domain name will not change. So if it is active, it remains active. If it’s on hold, it stays on hold (an incentive to use the procedures outlined above).
All registrars in the dot com, dot net, and dot org top-level domains follow the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”). Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.
Disputes alleged to arise from abusive registrations of domain names (for example, cyber squatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.
Patents are a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
There are 3 different types of patents:
- Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.
- Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
- Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
These categories should be viewed broadly. For example, computer programs and most “compilations” may be registered as “literary works”, maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”
Again, the USPTO is a good place to start but cannot be relied upon as comprehensive. TradeMark Express® recommends contacting an intellectual property attorney. Please contact one of our offices for the nearest referral.
Are there any organizations in my area, which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?
Yes. In your own or neighboring communities you may inquire about organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea.
es. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations, you can obtain this information by writing to the governor of your state.
No. The Office cannot act or advise anyone concerning the business transactions or arrangements that are involved in the development and marketing of an invention.
The USPTO, however, will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this is $25.
In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.
For more information about patents, please click below!
WIPO Trademark Research
Please see pricing for WIPO research at: European Community Research.
WIPO pertains to a system of international registration for trademarks. Two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol, govern this system. An individual who has a connection (be it through nationality, domicile or establishment) with a country in league with one or both of these treaties may obtain an international registration having effect in some or all of the other countries of the Madrid Union. At present, there are more than 60 countries involved. Fees range from 653-903 Swiss Francs.
The Community Trademark (CTM), instituted in April 1996 by the Office of Harmonization in the Internal Market (OHIM), allows an applicant to file a single trademark application to obtain trademark protection in each of the member states of the European Union Members include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, and the United Kingdom. Fees start at 975 euro.
All of the filings that are within the individual country databases may or may not be in either of the aforementioned databases. For example, within Germany there are over 950,000 trademark applications & registrations filed but only 275,000+ of these records are registered with WIPO. To ensure the most comprehensive research, it’s recommended that you search all of the individual countries of operation, as well as the WIPO & Community Trademark databases.
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