How a Trademark Attorney Uses the Internet for Legal and Trademark Searching (Life Circle Approach)


The Life Cycle of a trademark begins with the inception of the mark and progresses through several phases including investigation, registration, maintenance and commercial exploitation of the mark. In recent years, the proliferation of the internet has made it an increasingly important tool for cost effectively acquiring information related to the acquisition and protection of trademarks. This paper attempts to direct the reader to specific sites which may prove useful in obtaining trademark information.

I. LEGAL RESEARCH

Primary Sources of Information on the Internet

Primary sources of information relating to trademarks are available on the internet and may be accessed through a variety of sites, a number of which are listed below. Primary sources include statutory laws, case law, regulations, and practitioners manuals.

Statutes:

The University of Arizona Library,Legal/Law/Regulations

YAHOO-Government.Law:IP

Cornell University, Legal Information Institute, TM Law Material

Yale University, Reference Homepage, Primary Sources, Decisions, Statutes, Regulations

Internet Legal Resource Guide

US House of Representative Internet Law Library Home Page

Bit Law Company

University of Pennsylvania, Library, Federal Law Resources

New York University, Law Library

University of Indiana, Online Research Resources

George Washington University, Research Sites on the Internet

University of South California, Legal Resources on the web

Washburn University School of Law, Federal Primary Law

Findlaw Internet Legal Resources

Master McNeil Inc., trademark information

Galazy, IP law

Findlaw Cyberspace Law Center, General Legal Resources

Campbell Law Library

Cases:

http://www.ilrg.com/courts.html

http://www.yale.edu/lawweb/refprim.htm

Harvard University, Hollis Plus, US Supreme Decisions

University of Pennsylvania, Library, Federal Law Resources

Washington University, US Government Documents and Resources

University of Georgia School of Law, Legal Resources on the Internet

Chicago Kent:IP Law Internet Resources

Saint Louis University, School of Law

University of Indiana, Online Research Resources

George Washington University, Research Sites on the Internet

YAHOO Law Center

Gorgetown University, Law Library

University of Texas

Emory University

University of South California, Legal Resources on the web

Washburn University School of Law, Federal Primary Law

Findlaw Internet Legal Resources

Mindspring

P-Law, LEGAL Resource Locator

Cornell University, Legal Information Institute and Hermes

Findlaw Cyberspace Law Center, General Legal Resources

Lexis-Nexis

Campbell Law Library

Regulations:

US Patent & Trademark Office, Trademark Trials & Appeal Board Manual of Procedure

US Patent & Trademark Office, Trademark Manual Examining Procedure

House of Representatives-37 C.F.R

Yale University, Reference Homepage, Primary Sources, Decisions, Statutes, Regulations

US House of Representative Internet Law Library Home Page

University of Pennsylvania, Library, Federal Law Resources

Washington University, US Government Documents and Resources

George Washington University, Research Sites on the Internet

YAHOO Law Center

University of South California, Legal Resources on the web

Findlaw Internet Legal Resources

Campbell Law Library

Secondary Sources of Information Available on the Internet

In addition to primary law sources, secondary source information relating to trademarks is available through the internet. These secondary sources, noted below, include both analytical sources such as law review articles and and current awareness sites featuring recent developments in trademark law.

Analytical:

The Villanova Center for Information Law & Policy

Cardozo Arts&Entertainment Law Journal

The John Marshall Law School Intellectual Law

The Loyola of Los Angeles Law Review

Texas Legal

Gregory H. Gillot, All about Trademark

Kuester Law

Saint Louis University, School of Law

New York University, Law Library

University of Indiana, Online Research Resources

The world wide web virtual library law journals

Ladas & Parry, Newsletters

Current awareness

Kuester Law Technology Law Resources-Patent Copyright Trademark

The Journal of Intellectual Property. Hot IP News

Law Journal Extra

Stanford

The world wide web virtual library law journals

Ladas & Parry, What's New

II. MARKETING

Law firms commonly provide web sites on the internet to promote services and attract clients. Generally these sites provide a basic overview of intellectual property laws. Additionally, these sites typically include an overview of the firm including information such as the firm size, law specializations, and clientele. Links may also be provided to additional sources including, current awareness sites, newsletter subscription services, and primary legal sources, including recent case decisions.

Law firms may also offer services directly over the web. For trademarks in particular, law may advertise preliminary search services where a mark may be supplied to a firm directly through the web, whereupon the firm will perform a desired search and forward the results to the client.

Addtional services may include maintenance subscriber services, where a firm will inform you of filing deadlines to maintain a registered mark, or trademark watch services where a firm will monitor new trademarks which are published for opposition in the Official Gazette.

The following are a sampling of law firm sites which provide information as discussed herein:

http://www.ladas.com/middle.html

Indiana University

III. TM SEARCHING

Several resources for executing trademark searches are available through the internet. These resources may includes search databases, where for a prescribed fee, a registered user can execute their own search for federal, state and foreign trademark registrations. Alternatively, search services are available to perform trademark searches. These searches may include common law searches including business and yellow pages directories, domain name and internet searches, in addition to federal, state, and foreign trademark registrations.

Search databases

The two primary trademark search databases are provided by Microptatent and Thomson & Thomson.

Visit Micropatent now.

Micropatent's search database "THE TRADEMARK CHECKER" contains all U.S. federal trademark registrations which are on file in electronic form at the U.S. Patent and Trademark Office. The data includes all new applications and actively registered trademarks since 1884, plus any marks that have expired or been abandoned since 1984. The database contains 17 searchable fields. Three subscription services are provided for daily, monthly or annual access. The user fees are as follows:

$ 20/day for unlimited searching for any number of marks.

$ 100/month for unlimited searching.

$ 995/year for unlimited searching.

Micropatent also offers free access to the Official Trademark Gazette.

Visit Thomson & Thomson now.

The Thomson & Thomson "TRADMARKSCAN"database allows searching to be performed for federal,state, and foreign registrations. The database is updated twice a week. The data base can be accessed online through CompuServ, for example, and a trademark search may be performed for a prescribed fee plus connection time. The least costly search is currently a single database search; e.g., federal registration database, costing $25. This search will retrieve the five closest hits for a given mark.

Thomson & Thomson also provides extensive search services. For a prescribed fee T&T will perform any of several specialized services,some of which are listed below:

U.S. Full Availability Search $ 355

Federal & State register searches $ 255

Federal, State, or Common Law $ 180

Search services

Several search services are available on-line for perform trademark searches. While the range of search points varies from one service to another, it is noted that comprehensive searches including federal, state, and foreign registers, as well as internet, business directory, yellow pages and domain name searches are offered for as little as $100.

http://www.trademarkresearch.com

http://www.trademark-search.com

http://www.tmcenter.com

http://www.thomson-thomson.com/netscape/docs/main/TMSTOOLS.html

Net directory

Internet directories.AT&T 800 Directory.Index of Directories

http://www.december.com/cmc/info

Cornell Law

Yellow Pages

Searching engines

In addition to search databases and search services, common law searches can also be performed directly through use of internet browsers. Several search engines are currently available, including YAHOO, ALTAVISTA. Because each search engines operates differently, comparing results retrieved from several different browsers can provide an useful and cost effective means for locating marks in use.

IV. CONCLUSION

There are many sources available on the internet for information relating to the life-cycle of trademarks. Effective monitoring and utilization of these resources can provide a cost effective means for obtaining information and performing client services. However, care must be taken to ensure that information retrieved from these databases is reliable and current. At best I would recommend using internet sources as a preliminary source of information, to be supplemented with up to date searching using more conventional sources.


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