by YoungGi Hong

INTRODUCTION

A person who wants to use a trademark in commerce or intends to obtain a registration of trademark with the USPTO is required to conduct a search for the trademark as to whether any trademark, identical with or similar to the trademark, is registered or filed in the Federal Register or each of the State Registers. Furthermore, a common law search is also required to avoid a potential conflict with unregistered marks which have been used in commerce.

To conduct a trademark search, one of searching tools provided by different venders may be used. Such tools have their own advantages as well as disadvantages. One object of this report is to compare the effectiveness and convenience of such searching tools in users’ point of view. Based on such comparison, a user may choose more competitive searching tools which are appropriate for the purpose of his or her specific searching projects.

The review discussed in this report may not be complete due to the restriction of selected sample and the lack of data at the time of the review. In such a case, this report may take a role to raise some questions to be considered toward more efficient and user-convinient searching tools.

This project is directed to find more effective and convenient way of trademark search by reviewing the following three searching tools.

• DIALOG® (online or web)

• MICROPATENT® (web)

The review is restricted to the trademark searches, more particularly, is focused to federal trademark searches. Accordingly, any review in conducting searches for patent and other areas is not within the scope of this project.

Functionality, convenience and cost effectiveness are selected as the major factors to be considered in determining the advantages of the searching tools. Each factor may include some subfactors.

A. FUNCTIONALITY

This factor is focused to basic functions required for a trademark search. It may include the followings.

• Quality of searched data

Comprehensiveness and correctness of output data retrieved by the search.

• Coverage of trademark

• Contents of full text report

B. CONVENIENCE

Every searching tool is designed to provide easy and user convenient measures in conducting a search. The followings may be considered in this point of view.

• Search indexes

Variety of search indexes are required, which include:

• Narrowing down system

• Data browsing on screen

• Trademark image

Whether the image of trademark is provided together with text data.

• Database collection

C. COST EFFECTIVENESS

Most of searches are conducted with a limited budget. Cost effectiveness may be one of the major factors to be considered to choose a competent searching tool.

• Pricing system

· Costs for search and printing/downloading the output thereof.

· Pricing policy, such as hourly charge and charge per search.

Basically, a searching tool related to trademark search is designed to facilitate easy access to its databases, so as to retrieve searched data on trademarks. Generally, similarity is found in basic functions provided by each searching tool.

The data searched from each searching tool, however, may be different due to the dissimilarity in accessing measures and recorded data between the tools. A user may feel more comfortable and convenience while conducting searches if he can easily screen the data with assistance of various search indexes and narrowing down (focusing) system. Such convenience in use may differentiate one searching tool from another. Depending on search projects, one searching tool may have more advantages than another.

Given the above, a review has been made on each tool as below.

A. FUNCTIONALITY

A sample search has been conducted to know how each tool functions as a trademark searching tool.

1. Quality of searched data

(1) Search condition

(2) Number of hits

As of April 26, 1998

F1) The search is narrowed by three step process: trademark® class(es) ® goods/services

(3) Details of searched data

F1) * Serial No. in MicroPatent (differs from Serial No. in LEXIS-NEXIS)

F2) ** No data on "JASPER" trademark are found in DIALOG.

(4) Review on difference between searched data

The major differences shown in the above table (3) arise since each tool adopts its unique search indexes and wild characters. The wild characters used for each tool are as follows.

• Wild characters used with each tool:

Surprisingly, however, it has been found that some of data searched from one tool are in conflict with those from others, and some cannot be retrieved at all. Such lack of correctness in data may be considered serious. The difference between the tools is discussed hereinafter.

a. DIALOG® — Trademarkscan®

This tool failed to retrieve the following two marks:

· JASPER; and

· JASON VIII; JOURNEY FROM THE CENTER OF THE EARTH ("JASON VIII")

It is reviewed that JASON VIII has not retrieved due to the restriction of wild character in DIALOG. (see the above table). Among goods/services registered with JASON VIII are "prerecorded video tapes...." Due to the restriction of using wild characters at the beginning of the word, the trademark could not be searched.

Meanwhile, more surprisingly, there is no data on JASPER searched by DIALOG.

b. LEXIS®-NEXIS®

This tool could not retrieve the JASON VIII mark due to the same reason explained in DIALOG. LEXIS-NEXIS does not provide any wild character for left truncation, and therefore, skips the mark with the goods and services of "prerecorded video tapes....".

c. MICROPATENT® — Trademark Checker

A wild character used for left truncation in connection with goods/services is available in MicroPatent. Therefore, it is the only tool which retrieves JASON VIII.

However, it failed to search out JASPER. Embarrassingly, it happened because no data on goods/services is recorded with JASPER. Also, the serial number of JASPER does not accord with that in LEXIS-NEXIS, the reason of which is not ascertained.

2. Coverage of trademark

Each of the tools can search major forms of trademark, including word mark, design mark and slogans. It also covers pending, registered, expired, abandoned or canceled trademarks.

3. Contents of full text report

B. CONVENIENCE

This factor may be evaluated focusing how easily and time-savingly users can get desired search data.

1. Variety of search indexes

F1) Many of specific terms may be used for specific search; e.g., class, goods/services, filing date and registration date.

F2) Each tool furnishes extensive search, including sound-alikes.

2. Narrowing down system

a. DIALOG® — Trademarkscan®

Narrowing down system in DIALOG is well-organized and most convenient. A search may be narrowed down by combining a searched set with other set or sets, or combining new terms with other set(s).

b. LEXIS®-NEXIS®

Narrowing down is available in two ways; one is using the FOCUSÔ feature and another is using the MODIFY feature.

It is noted that FOCUS has the restriction of number of trademarks to be focused. If trademarks first retrieved excess a certain number, further focusing will be denied. Also, another restriction of FOCUS is that further focusing is not available in a successive manner. Once a first level of search is retrieved, further focusing is necessarily added to the first level.

As to the MODIFY feature, care should be taken that "back modifying" enlarging the search level does incur a new search charge.

c. MICROPATENT® — Trademark Checker

A search may be narrowed down in MICROPATENT. However, the system is not similar to those in DIALOG or LEXIS-NEXIS. To narrow down, users should add new terms to the previous terms, and then reexecute a new search.

3. Data browsing on screen

a. DIALOG® — Trademarkscan®

Whenever displaying searched data on the screen, it incurs a new charge. Therefore, it is not allowed to preview for free the searched data on the screen even if it is necessary to determine whether further narrowing down or printing.

b. LEXIS®-NEXIS®

Free browsing of searched data is available on the screen. A user may browse searched data and determine whether the data are what he or she intended to obtain. Also, unnecessary data may be eliminated to save the cost of printing or downloading the data.

c. MICROPATENT® — Trademark Checker

MicroPatent adopts a pricing system to charge per day. Any browsing on the screen does not incur an additional charge.

4. Other subfactors

F1) * Trademark image in LEXIS-NEXIS may be viewed on the screen by using hypertext button. However, the image is not available together with the text of data when printing out.

C. COST EFFECTIVENESS

Most of users has a budget limit. In this point of view, cost factor may not be ignored. Each tool adopts a different pricing system, as follows.

As of April, 1998

F1) * A list of searched data which includes trademark, status, goods/services, registration number, serial number, first use date and owner

F2) ** $295/month; $1,995/year

F3) ***A large number of common law databases are provided by DIALOG and LEXIS-NEXIS.

F4) **** American Business Director (file 531) in DIALOG; US Business Directory (MARKET;ABIUS) in LEXIS-NEXIS.

F5) LEXIS-NEXIS provides a combined database of Federal and State Ragistration at the same price of Federal Registration.

F6) Pricing systems shown above are typical ones. However, other pricing systems are available depending on tool vendors. Also, the price may be different subject to contract.

For current price information, visit:

A trademark search is usually conducted when a mark has to be cleared for adoption, use and federal registration. In such a case, two types of search may be conducted: preliminary search and full search. A preliminary search is useful to quickly eliminate potentially conflicting marks. This type of search is frequently conducted based on the federal registration. On the other hand, a full search must include federal and state registration as well as common law sources.

Tools used for trademark searches have their advantages as well as disadvantages, respectively. No tool is considered perfect in all factors discussed above. Surprisingly, there even exist data missed and inconsistent between the tools. Therefore, it is recommended to choose one of searching tools or combine them to conduct searches in the most effective way. The brief advantages of each tool are considered below.

a. DIALOG®

DIALOG provides federal and state registration and common law databases. DIALOG — Trademarkscan is considered an effective way to conduct specific searches using registration number and serial number, and searches for exact trademark. Searched data on exact marks may be effectively obtained under the pricing system adopting charge per minute and print.

DIALOG, however, does not allow browsing searched data on the screen. Displaying the searched data on the screen incurs a new charge. If some of the data on the screen are unnecessary, it is wasteful to pay the cost therefor.

b. LEXIS®-NEXIS®

All type of databases required for a full search are available in LEXIS-NEXIS; i.e., federal and state registration and common law databases. Essential data may be printed out after browsing them for free on the screen. However, the cost is added whenever executing new searches for marks and/or terms.

c. MICROPATENT® — Trademark Checker

State registration and common law databases are not available in MicroPatent. However, if it is required to conduct a large number of trademarks on federal registration, MicroPatent may have advantages in view that a full day search with a lower cost is available in comparison with other tools. In particular, no charge for printing/downloading of data severs as one of advantages to MicroPatent when printing a large number of trademarks searched. Also, a wild character in MicroPatent for left truncation may be useful when narrowing down searched data.

Other than the searching tools discussed above, there are found some searching tools on the web: for example, Corporate Intelligence at http://www.trademarks.com and The Trademark Register at http://www.trademarkreg.com. However, in view of the scope of this project, further discussion thereon is omitted.