A trademark is "born" when the owner of the potential trademark develops a list of possible names, symbols or devices for the product or service in brainstorming sessions, using imagination, name creation software or services of a professional name creation company.

The mark must be capable of distinguishing products or services of one source from another in commerce, and must be stronger than merely descriptive of a product. If the mark consists of a fanciful term or a word arbitrarily applied to the product, it is stronger than a word that describes what the product is or does. A descriptive mark will qualify as a trademark only if it has attained a subsequent distinctiveness, a secondary meaning, in the minds of the consumers. Thus, if the mark describes the product, but it is a new product unknown to the public, it is not registerable. Generic marks are not registerable at all.

Whether a particular mark falls into the descriptive or suggestive category is an issue that may lead to litigation, therefore an experienced trademark attorney should render advice on the strength of a mark for registerability. A potential owner may find the following guidelines helpful in developing a preliminary list of potential trademarks:(2 )

WEAKER STRONGER

Generic Descriptive Suggestive Arbitrary Fanciful

Cannot serve Immediate No immediate Uncommon Terms not in

as a trademark conveyance of conveyance but application of common usage

size, quality requires imagination a word or coined word

to link the name

May serve as a with the product

trademark only

with secondary Suggests a quality

meaning or feature of the

product.

Examples:

aspirin Deep Bowl Spoon Brown-In-Bag Apple Computer Kodak

elevator (a spoon to be used (for a plastic Exxon

for a deep bowl) cooking bag)
 

2. Screening

Screening is a preliminary, inexpensive search that quickly eliminates marks on the list developed during the Creation phase. The purpose of screening is to economically narrow the list before progressing to a more costly and intensive search of each potential mark. An individual or a professional search company should consult trademark directories or online search databases to look for identical or easily-located registered marks.

The screening phase should not substitute clearance and investigation. It is merely a preliminary search with a view toward economy.
 

3. Clearance

Clearance is an expansive search of the mark performed by a professional searcher investigating U.S. federal and state registrations, as well as international registrations as needed, and other resources to locate trademarks established under the common law. According to Thomson & Thomson, the searcher should look for 1.) identical marks in all goods and services classes and 2.) confusingly similar marks relevant to the appropriate industry or classification. The searcher should also look for potential dilution problems regarding others' existing famous marks. The owner of the proposed mark should not buy a lawsuit, even if the mark passes USPTO registration requirements.

The results of clearance should be assembled into a cohesive report upon which an experienced attorney may base an informed opinion, complemented by information gained during the investigation of any existing marks discovered during the clearance search.

Although the owner may be protected to some extent, there are no guarantees that the search will turn up every problem. A search is limited by financial resources and time and must balance against benefits gained by searching more obscure resources. It is always possible that an existing trademark was not published in the consulted sources.

4. Investigation

The searcher should investigate each existing mark discovered during clearance to find out if that existing mark is actually still in use. This stage is crucial because one phone call to the owner of an existing mark in question can expeditiously inform the searcher that the mark has been abandoned and the path is clear for the proposed mark. On the other hand, the investigator might find that the owner of the existing mark would probably oppose any registration attempts.

The investigation minimizes the economic risks to the owner of the proposed trademark regarding wasted registration fees, future litigation costs and other business expenses such as marketing, re-labeling, and lost goodwill.

5. Opinion

After a full search and investigation of the potential trademark is complete, an experienced trademark attorney analyzes the research results and renders an opinion, recommending filing and registration of the mark or disposing the mark and beginning the cycle again.

6. Filing/Registration

Once a positive opinion is given, an application for registration is filed with the USPTO where it is analyzed by the Examiner who conducts his own search of the U.S. Federal Register. If there are no similar existing marks on the register, the mark is published in the Official Gazette as notification to others who may oppose the registration because the proposed mark may conflict with others' existing trademarks.

The mark is registered if no one opposes it. The Trademark Trial and Appeals Board (T.T.A.B) hears any opposition hearings brought by any opposing parties and renders a decision on the registerability of the mark. If the mark is approved, registration is at hand, but if the T.T.A.B. denies registration, the is not protected.

7. Protection

A trademark requires monitoring to guard its value against infringing, confusing and diluting marks used by others. The trademark owner also should ensure that the mark is properly used in sales and promotional materials so that it represents the source of a product and does not become a generic name for that item. For example, "Xerox" should be used as an identifier of the source, not as a name of the resulting product, the generic term "photocopy."

These monitoring activities should continue for as long as the mark is active. The Official Gazette of the USPTO is a superior source to inspect new trademarks that are published for opposition. Trade journals, newspapers, yellow pages and directories are other valuable sources of information to periodically monitor usage of similar marks.

The owner of the trademark can be a superior protector of the mark since the owner is often most familiar with the latest news and trends in his market. Family business owners might self-monitor the trademarks, depending upon the size and financial resources of the business. The trademark owner should periodically retain an attorney to search sources not available to the owner of the mark. Attorneys can also provide specialized searches in depth as needed. For a particularly valuable trademark or one owned by a corporation with significant investments in the mark, a professional search company can provide a comprehensive, economical search or enhance a search by an attorney.

8. Maintenance

To retain trademark protection, the owner must maintain continuous use of the mark. Additionally, the USPTO requires the trademark owner to submit an affidavit between the fifth and sixth years after initial registration testifying that the trademark is still in use. Trademark owners must renew their marks every ten years. If the owner fails to submit timely documents for renewal or to show continuous use, the mark is in danger of cancellation. Failure to maintain the mark may be evidence of abandonment.

9. Commercial Exploitation

When a trademark has achieved a certain level of notoriety as an identifier of goods for consumers, it is a valuable commodity that may be licensed to other vendors selling unrelated goods who may benefit from the mark's goodwill. The increased visibility of the trademark will intensify public recognition, thus perpetuating the value of the mark. Now the trademark owner may profit from the trademark's popularity, maximizing returns on investment into the development of the trademark.

Some sources should be consulted in any full search:

* USPTO Federal Register

* State Registers

* Shepard's Citations

* Common Law Sources

- Trademark, trade name and general business directories

- Telephone Directories

- Thomas Register

- Trade Names Dictionary

- Dun & Bradstree

The sources consulted are dictated by the anticipated classification and use of the proposed trademark. If a trademark will be used in specific industry, the searcher should consult specific trade journals in that industry. Likewise, if the owner of a proposed trademark anticipates expansion into a certain region of the world, the searcher should consult specific international registers.

* International Registers

- Canadian Register

* Industry Trade Journals

- Specialized Dictionaries

- Industry trade directories

- Trade periodicals

Databases can provide quick and thorough search feedback to the individual searcher.

* On-line databases

- Trademarkscan and Compu-mark (Thomson & Thomson)

- Dialog

- Micro Patent

* Internet databases

- Saegis Trademarkscan (Thomson & Thomson) http://www.thomson-thomson.com

- Dialog http://dialog.krinfo.com * Internet search engines

* CD-ROMs

How thoroughly should an attorney search? The attorney should balance the needs and financial resources of the business, weighing the costs of a implementing certain search strategies and resources against the risks of foregoing those strategies. A professional search company such as Thomson & Thomson can complete a full search for an economical $300-$400 with a 5 day turnaround, providing excellent assurance to most clients.

The scope of the search will vary according to the status of the proposed trademark in the Trademark Life Cycle. Trademark attorneys may find it convenient to conduct online searches for the screening, investigation and maintenance phases, but prefer a professional search company to conduct clearance and protection searches. Thomson & Thomson offers a menu of different searches and search sources to customize any clients' needs throughout the phases of the Trademark Life Cycle.

Likewise, the scope of the search may vary based on the size of the business. Is the owner a multi-national corporation with millions of dollars invested in research and development? Or is the owner of the proposed mark the owner of a local, small business with little money invested at the time of the search? Small businesses just starting up may not have the financial flexibility to fund advanced searches beyond local borders and the federal register.

Similar to the scope of the sources consulted for a search, the time devoted to a search should be commensurate to the benefits gained by it, measured by the resources of the proposed mark's owner weighed against the risks of foregoing a lengthy search. The search may take as little or as long as the situation demands. A screening search will take much less time than a clearance search. Protection searches are periodic and performed routinely: weekly if the searcher is in-house corporate counsel or annually if the mark is of lesser value or owned by a small business owner.

PROS:

1. Control: The attorney has more control over the search.

2. Time: May turnaround quickly if the information is needed the same day.

3. Cost: A screening search may be done quickly with CD-ROMs.

4. Specialized Knowledge: Attorney may have a specialized knowledge of a certain industry.

CONS:

1. Quality control:

* The attorney may not have as much experience with cutting edge resources as a professional search company.

* Other employees' searches require close supervision regarding reliability and comprehensiveness.

2. Time: Attorney's time might be better spent doing legal opinion work.

3. Cost: A professional search company can provide a more complete clearance search for less money,including international searches and consulting a wider variety of resources.

4. Limited resources: Online databases & CD-Roms.

5. Training: Online database training to develop competent search skills can be expensive and time-consuming.

6. Liability issues regarding negligent searching or failure to search properly.

With the rise of the internet and the information age, many attorneys are able to conduct adequate screening searches within the United States or abroad. A general internet search is not enough to sufficiently clear a proposed trademark. The global expansion business climate places great burdens on trademark owners to conduct extensive clearance searches beyond the U.S. border. Because professional search companies like Thomson & Thomson can provide comprehensive searches at economical prices with a wide range of sources, including international sources, it is often worthwhile to farm out the search.

It is best to farm out trademark searches when:

* It will cost more in total hourly fees for an attorney to search than a flat search fee for a professional search company

* The trademark owner plans to invest heavily in the mark

* The mark is worth a great deal in goodwill

* The trademark owner massively licenses or promotes products

* International expansion is anticipated

* Expensive, specialized trade and industry sources are required

When the attorney chooses to do an in-house search, who is the person to do the search? Undoubtedly, the attorney best understands the legal registration requirements for distinctiveness and can conduct a precise search with those needs in mind. However, an attorney's time is expensive to the client, and the attorney must allocate the clients' resources wisely. The answer to this common dilemma depends on many factors, balancing the needs and resources of the client, the type of search required, the size of firm, the level of skill of the searcher and the searcher's familiarity with the subject matter. In-house search professionals, paralegals and secretaries are less costly, and may effectively perform screening, protection and maintenance searches, however, the attorney must inevitably decide which existing marks truly could conflict with the proposed mark regarding likelihood of confusion.

Because the attorney is ultimately responsible for the quality of the search, quality control issues arise when an attorney relies on employees who don't have the professional training to discern confusing marks. How does the attorney know what trademarks were missed? When an employee performs a search, the attorney should always closely supervise the search, requiring the employee to keep a log of the search strategies, sources consulted, and results. The attorney should also randomly audit the search strategies of the employee to ensure that the searches were performed properly and the results are correct.

Finally, reduce confusion and delay by routing all of the searches through a single individual who maintains files on what searches have been performed.⁽³⁾

ADDENDUM

(1) Thomson & Thomson, Life Cycle of a Trademark (1992).
You can reach them at their website at:  http://www.thomson-thomson.com
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2 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976)
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3 Glenn A. Gundersen, Getting the Most Out of a Trademark Search, Remarks: Trademark News for Business, Vol. 7, No. 3, (1994).
 

Additional Source

Glenn A. Gundersen, Trademark Searching: A Practical and Strategic Guide to the Clearance of New Marks in the United States, (International Trademark Association 1994).

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