I. What's a Commodity?

As per Britannica's web cite, http://www.m-w.com, the noun "commodity", pronounced k&-'mä-d&-tE, was first referred to as "commodus" in Latin, in the 15^th century. Since then it has been adopted by the French -- commodité, and the British -- commoditee. It is used to refer to an economic good, and is a synonym for "merchandise" as per Thesaurus http://www.thesaurus.com. In other words, a commodity is what is "bought and sold in business" (See Britannica). Thus, a commodity seams to be very similar, if not equal, to personal property, recognized by its bundle of rights. A personal property's bundle of rights primarily consists of the ability 1) to use, 2) to exclude others, 3) to devise and/or to decent, and 4) to alienate. Consequently, in order to answer whether a trademark registration record is a commodity, we first need to establish how the above bundle of rights applies to trademark records.
 
 

II. Is a Trademark a Commodity/Personal Property?

Let us individually examine each right from the personal property's bundle of rights and determine if it can be applied to trademarks.

1) Can a trademark record be used? A trademark record is used to signal to others that a particular mark is used by someone already. There are two ways that the above question may be answered a) usage of the trademark, or b) usage of the trademark record itself.

a) A mark needs to be used before it is registered as a trademark (unless it is registered as a "intent to use", in which case, its use must start within a time period after registration.) It does not seam that a mark's registration and the mark's use are related because one does not necessarily follow the other. Thus, the right to use a trademark does not originate with the registration record. However, even if the right to use does not start with registration, one of the reasons a person registers a trademark is to use it freely.

b) The trademark record itself is used to alert others to the fact that a particular mark is no longer available to anybody else. The first requirement for personal property is thus met either way. A trademark registration, a trademark's registration record, is precisely what signals this use to others. This, in turn, leads to

2) Can a trademark record exclude others? A trademark record on a particular

mark excludes others because the law will enforce exclusive use of that mark by the owner/registrant. By definition, a trademark record serves as a signal to others. That signal is loud and clear: this mark is mine, I want to use it, please stay away from it! Most of all, the courts will enforce that claim (assuming that it is a valid trademark). Consequently, obtaining a trademark record prevents others from using that particular mark, while reserving it for oneself. A trademark record thus meets the second requirement of personal property.

3) Can a trademark record be devised and/or decentable? Given that a trademark ceases to exist as a trademark when it is no longer used, as supposed to when the person passes away, the trademark record is devisable/decentable through the company. Let's analyze devisable and decentable separately.

a) To devise something means to will that something to anyone. It is difficult to imagine "inheriting" a trademark in the traditional sense of the word. On the other hand, a person could pass on their business to another, perhaps a son or a daughter. If that were the case, all the trademarks will thus pass to that person, along with the business, as good-will. It would thus appear that a trademark record is devisable.

b) To decent something mean for it pass down the natural line of inheritance (within the family) without an expressed will. I can put forth a theory claiming that a trademark record is decentable. First, we need to define a business as a person, an independent entity, for the trademark record to be said to pass down "the natural line of inheritance". Then, we need to define that line of inheritance and show how a trademark record will follow it.

How can a company be equated to a person? It is well known that each business has a unique culture and that people are hired based upon how well their personalities will fit in the already established work environment. Thus, a business entity has its own character and its own personality. Furthermore, the law already considers corporations to be independent legal entities. It can be thus argued that any business is its own entity, much like a person. The life of such an entity will end if it is bought out -- the personality will change, the accounting ratios will change. It would turn into a different entity, but it would still be of the same family because the core of the old company would still be present. (Another way a company could end is through bankruptcy; that would equate to someone passing away, leaving no family behind -- the estate will escheat.) That is the natural line of inheritance for a company. After an acquisition, the buyer, or the newly formed company, acquires all the assets through that natural line of inheritance; including all trademark registration records. And this, your honor, is how a trademark record is decentable, and how it meets the third requirement of personal property.

4) Can a trademark record be alienated? The alienation/sale of a trademark record ensures the occurrence of the first and second right. However, in order to fully answer the question here posed, we must acknowledge that there are two definitions to the word "alienate". "Alienate" could mean a) duplicate and sale or b) sale the one and only copy the owner has and never see it again. Under both definitions a trademark record turns out to be alienable. Let's explore them one by one.

a) The duplication and distribution of trademark records allows the dispersal of knowledge of existing trademarks. It is that alienation of records that helps prevent trademark infringements and insures the right to use freely and the right to exclude others by providing knowledge of existing trademarks to the surrounding world.

A lot of companies have developed online trademark search engines and have uniquely enhanced and organized them in order to better attract buyers of that particular knowledge. Of course, if one does not really wish to pay for such services, one might search through the records in the print version. The secretary of state has the state registered trademarks; newspapers, articles, and magazines contain the common use; and Washington publishes the federal registered trademarks in the Official Gazette which can be found in most public libraries.⁽¹⁾ 

The Official Gazette has a reputation of being well used for trademarks. The Gazette tends to contain the basic record, often with a drawing, and enough of information to help the researcher decide whether he/she should look further into a particular trademark record. Because the Official Gazette offers the possibility to quickly scan the trademark records, a number of trademark researchers use it as a starting point and then further refine their search by using a paid online service.

The researcher's needs, allocated time, and budget is what will ultimately decide the researcher's strategy and resource allocation. There are a lot of trademark searches available to a researcher; they do not cost the same and they do not provide the same information. Quality of the search is incredibly important for trademarks because companies needs to avoid elements and likelihood of confusion. (This is why most law firms will farm out their trademark research, as per Standard & Poors' statistical analysis.) Furthermore, the researcher should check all four areas of potential trademark infringement: state, federal, common use, and international. Thus it is very important to consider whether money is an object. In order to efficiently search, the researcher should be at least some what familiar with the different venders' available features: content of the data bases, how far back goes the data, the scope, type of enhancements made to the record, what is the correction policy, the error rate, the userfriendliness of the interface, "point & click" or commend language, are there abstracts, output flexibility, customer support, provided training and help over the phone (the list was inspired by Patent and Trademark Research class's class notes.)

There are many online trademark search engines, and each can further have several different access points. New such engines and access points will continue to emerge in the future. In short, there are many options for trademark searching, each yielding different results at a different price. Here, we will briefly touch upon one of them: DIALOG. There are nine ways to connect to DIALOG. Seven of them are command oriented (1.Generic telecommunications software, 2. DialogLink communications software, 3. Telnet using the Internet to http://www.dialog.com, 4. DIALOG on WESTLAW, 5. DIALOG WEB at http://dialog.krinfo.com, 6. DIALOG on CompuServe, 7. KR OnDisc family of products.) There are also two click access methods (8. KR Quick Start communications software package, ARTWIN, 9. DIALOG Select at http://dialogselcect.krinfo.com) (As per the DIALOG Options Training Sheet) Out of those nine ways to connect, number five --  DIALOG WEB, is the most user friendly. According to a DIALOG representative, DIALOG WEB is actually more powerful than some of the other connections and although it still uses commend language, the necessary commends are not difficult.⁽²⁾ 

DIALOG WEB is equipped with numerous databases. It would be pointless to try to list them, or even summarize them, however I will mention that the common law searches available are very comprehensive. Although DIALOG WEB is liable to disconnect to the searcher often, customer service is ratter vary friendly and often helpful. Like others, DIALOG WEB allows the searcher to explore several databases at once and then allows for a short, medium, or full viewing of the documents found. In my opinion, DIALOG WEB is very easy to use, has a clear presentation of results, and is fairly priced.

The web should not be overlooked as a free source of research, keeping in mind its limitations. I believe that the Yellow pages (http://www.bigyellow.com) and all the search engines should be routinely scanned. Once again, because each search engine operates differently, the same search will most likely yield different results. None-the-less, it is a good, free guideline source if time can afford it.

Having said all that, it is perhaps best to farm out a trademark search to professional searchers such as Thomson & Thomson. That way, it will Cray an official stamp for about $400. Liability on a self performed trademark search can be tremendous. I would suggest to start with the print in order to get a general idea, then surf through the web using all different search engines, then start exploring the paying databases starting with the least expensive one, and if the search has not yet eliminated the researched mark as a potential trademark, farm it out. Because each citation is unique, budget and quality needed must be considered each time.

As you can see there are many merchants offering "organized and beautified" trademark records. Thus, trademark records meet the fourth requirement of personal property under this definition.

b) In turn, we may speak of fully alienating the one and only trademark registration record a company possesses, i.e. selling the actual trademark to another company. Such a sale would equate to a good will sale and is not often practiced -- a company has no interest in selling their trademark and continuing to produce the same product (unless the product was not well accepted in the market and the company wanted a new try at the same product under a different name -- the "Diet Beer" experience. See Harvard Business Cases. However, the company would not sale, but simply abandon the existing trademark.) The majority of cases where a trademark is sold to another company is when the owner of the trademark is acquired/bough out by the other company. In such cases, the trademarks of the different products and the name of the business are sold as "good will". Non-the-less, a trademark registration can be alienated as per the second definition as well. Trademark records thus meet the fourth requirement of personal property under all possible definitions of alienable.
 
 

III. A Trademark Record is a Commodity/Personal Property

From the above analysis we can conclude that a trademark record possesses the same rights as a personal property's bundle of rights -- right to use, to exclude others, to devise and/or to decent, and to alienate. Since we determined that a commodity is personal property, and since it can be argued that a trademark record fits the description of personal property, a trademark record is a commodity.

¹ There are also other ways to obtain a print copy of a trademark record: fax services, downloading and printing from the web, PTO, PTDL, employ runners or professional searchers.  (Return to main text)

² DIALOG still primarily uses commend language as supposed to point and click because there is just too much data to be converted. However, they are slowly moving towards the point and click user interface.  (Return to main text)

Return to the IPMall.
Return to the FPLC Home Page.