STATE REGISTRATION DATABASES

Information on trademarks and some fictitious names registered with secretaries of state of all 50 U.S. states and Puerto Rico are available on several databases:

Unfortunately, there are inconsistencies in contents caused by variations in the record-keeping by the states. Some states don't include information on assignments, registration numbers, filing correspondents, goods and services. The on-line versions are updated weekly and the CD-ROM versions are updated monthly, however, the currentness of each record depends on the updating schedule of the individual state.

COMMON LAW RESOURCES

A common law trademark search is quite complicated, because there are potentially thousands of trademarks and trade names in use which are not registered, and there are no sources which can possibly include all of them. A comprehensive search for common law trademarks should include searches in the following:

The search strategy should be similar to searches of the registration databases. The searcher should search for exact trademark, phonetic equivalents, variant spellings, and otherwise confusingly similar uses of the trademark.

TRADEMARK LITIGATION RESOURCES

A full search should also include a search of Shepard's United States Patents and Trademarks Citations for litigation involving a mark. Shepard's lists trademarks that have been involved in litigation, that have been mentioned in court cases, or have appeared in the Trademark Official Gazette (where marks are published for opposition, giving the public 30 days to object to their registration).

The cases are in LEXIS's Trademark and Unfair Competition Law Library (TRDMRK), which contains federal and state trademark and unfair competition cases, statutes, and administrative law materials as well as legislative history information, trademark publications, and treaties and other international materials; and in WESTLAW's FIP databases. WESTLAW's collection of federal and state trademark and unfair competition materials is similar in content to the LEXIS TRDMRK Library, and is enhanced by B.N.A.'s U.S. Patents Quarterly, the intellectual property decisions of U.S. courts and the PTO.

ADDITIONAL USES OF TRADEMARK RESOURCES

In addition to their use in trademark availability searching, the trademark registration and common law resources are also useful for related searches. The registration databases can be used for determining the status of an infringer; researching Trademark Trial and Appeal Board (TTAB) actions involving a competitor; watching for infringing marks; performing due diligence ownership searches in preparation for trademark assignments; searching for supporting information to overcome a PTO examining attorney's objections to a proposed mark; and monitoring competitors' trademark applications for new products.

Similarly, the product and company databases, which are available on DIALOG, LEXIS/NEXIS, and DOW JONES INTERACTIVE, are useful for competitive intelligence research and for researching infringers. The product databases can be used to learn more about a trademarked product including where and how it is sold, and the company databases can be used to determine whether the holder of a conflicting mark found in a search is still in business or no longer using the mark.

Product Directories

Individual databases which are particularly useful for product name searches are:

 Company Directories

DIALOG, NEXIS, and DOW JONES INTERACTIVE are also very convenient, with their capacity to search multiple databases simultaneously. On DIALOG, company names can be searched through DIALINDEX or in Company Name Finder (File 416 and on DIALOG Web). Further investigation of DIALOG's news and trade publication articles can reveal mergers and acquisitions, bankruptcies, name changes, and other corporate changes. On NEXIS, there is the COMPNY library, which contains over 200 files of business and financial information on public and private companies. The files within the COMPNY library can be searched individually, in combined files, or simultaneously.

RESEARCHING TRADEMARKS OUTSIDE THE U.S.

The Internet, and the increasingly global nature of trade, underscore the importance of obtaining trademark protection in the major industrialized countries if not throughout the World.

There are a number of databases available to U.S. searchers, which provide the registrations of marks in Australia, Canada, New Zealand, and most European countries. Registrations for European Community Trademarks (single trademarks enforceable in all European Community countries) are available in AvantIQ's European Community Trademarks database (TMEC), Questel•Orbit's European Community Trademarks database (TMEC), and Thomson & Thomson's Trademarkscan-European Community (File 227). Also available on several databases is the International Register, which currently contains around 280,000 marks registered with the World Intellectual Property Organization (WIPO) under the Madrid Agreement Concerning the International Registration of Marks.

Most databases for researching trademarks outside the U.S. are available on commercial services, however, national trademark registration databases are provided on the Internet by some governments:

 Although in most countries outside the U.S. trademark rights are based solely on registration, the search of common law trademarks in those countries which recognize common law trademarks can also be useful. Foreign common law resources are available on DATASTAR, DIALOG, NEXIS, and WESTLAW.

CONCLUSION

IN CONCLUSION, the trademark searcher has a large, and steadily increasing, number of available resources for determining the availability of particular trademarks and for answering other trademark questions. The vast amount of information provided in the federal, state, and foreign registration databases and in the common law sources offers increasing responsibility as well as opportunity for the trademark searcher.

ADDITIONAL RESOURCES

Gundersen, Glenn A., TRADEMARK SEARCHING: A PRACTICAL AND STRATEGIC GUIDE TO THE CLEARANCE OF NEW MARKS IN THE UNITED STATES, International Trademark Association (1994)

McCarthy, J. Thomas, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION (4th ed. 1996)

PTO, TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) (2d ed. May 1993)

DATABASE RESOURCE INFORMATION

 NOTES

[1] Registration provides certain benefits, including the exclusive right to use a trademark on specific products or services, and is an official record of use in case the trademark is involved in litigation. Federal registration, which is available for products and services being sold in interstate commerce, is the most beneficial. Federal registration provides national ownership rights, the right to sue for infringement in the federal courts, and other benefits. State registration provides trademark rights only within that state.

[2] Under the provisions of the Federal Trademark Dilution Act, 15 U.S.C. §1125(c), the owner of a famous mark shall be entitled, "subject to the principles of equity and upon such terms as the court deems reasonable," to an injunction against another person's commercial use of a mark or trade name, if the use begins after the mark has become famous and it causes dilution of the distinctive quality of the famous mark.15 U.S.C. §1125(c)(1). If the "dilutor" acts willfully, the owner may be entitled to damages, court costs, attorneys' fees, and destruction of the articles bearing the diluting mark in addition to injunctive relief.15 U.S.C. §1125(c)(2).

Dilution is defined as: "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of - (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception." 15 U.S.C. §1127.

To determine whether a mark is famous, the Act provides that courts may consider factors such as the following:

• the degree of inherent or acquired distinctiveness of the mark;

• the duration and extent of use of the mark;

• the duration and extent of advertising of the mark;

• the geographical extent of the area in which the mark is used;

• the channels of trade (the market for the product);

• the degree of recognition of the mark within the trading areas;

• the use of the mark or similar marks by third parties;

• whether the mark was federally registered. 15 U.S.C. §1125(c)(1).

Although most of the marks which have been held by the courts to be "famous" under the Federal Trademark Dilution Act are "recognizable" nationally (e.g. BUDWEISER (Anheuser-Busch, Inc. v. Andy's Sportswear, Inc., 40 U.S.P.Q.2d 1542 (N.D. Cal. 1996)) and PORSCHE (Porsche Cars North America, Inc. v. Manny's Porshop, Inc., 972 F. Supp. 1128 (N.D. Ill. 1997)), some have not been so "recognizable" (e.g. INTERMATIC electrical products (Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) and NAILTIQUES fingernail products (Nailtiques Cosmetic Corp. v. Salon Sciences Corp., (41 U.S.P.Q.2d 1995 (S.D. Fla. 1997).

See J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:67 et seq. (4th ed. 1996) for additional information regarding trademark dilution.

[3] Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987).

[5] Id.

Copyright © 1998 Susan E. Gindin