Trademark Searches and Enforcement - Module 4 of 5

Trademark Searches and Enforcement - Module 4 of 5


Modules 4: Trademark Searches and Enforcement

Because a trademark provides a business owner with a limited monopoly over the use of a protected mark, a trademark search is one of the most important initial steps when choosing a new business name, brand name or logo.  Trademark searches serve several vital roles. Searches provide important information regarding the availability of a particular trademark.  Searches can also assist in making sure that a business is not likely to infringe upon another company’s mark. Finally, searches can highlight hurdles that occurred when others tried to register a mark, providing trademark practitioners with a roadmap for trademark prosecution. In this module, we’ll explore services available to assist with trademark searches and then discuss how trademarks can be enforced by their holders.

Nationwide Trademark Databases

Most trademark searches begin at the Trademark Electronic Search System [1], or TESS, offered for free on the US Patent and Trademark Office’s website.  TESS is a public record of all active and inactive federal trademark applications and registrations.  A TESS search can assist in deciding whether a “likelihood of confusion” would exist between a proposed mark and a previously registered mark.

The Trademark Electronic Search System provides several search options: a basic word mark search, a structured word and/or design mark search, a free-form word and/or design mark search, a “dictionary” search and an Official Gazette search.

A basic word mark search can only be used to search word marks.[2]  The user can search by words, serial or registration numbers, owners’ names or addresses or all of these.  The user can require that the search pull all documents with any of the searched terms, with all of the searched terms or with specific search phrases.  For example, a search for Starbucks coffee provides all (74, as of this writing) active and inactive trademark applications and registrations that include both Starbucks and coffee.  These include word marks and design marks in a variety of the 45 federal trademark classes of goods and services.

A structured word and/or design mark search allows the user to search a wider variety of fields, including filing dates, categories of goods and services and design codes.  The separate online Design Code Search Manual [3] can assist in determining the appropriate design code to search, and the online Trademark ID manual can assist in finding various categories of goods and services.  For example, a search for the mark skittles and the design code 01.15.01 (for rainbows) currently reveals 12 live and dead applications.

A free form word and/or design mark search allows the user to construct searches using Boolean logic and multiple fields. This can be used to create a wide variety of searches ranging from extremely broad to very specific.

A dictionary search [4] allows a user to search for a particular term, providing data regarding the total number of hits for a specific term and for the alphabetically closest 10 additional terms in any previously registered trademark.  For example, a search for uber reveals well over 3,000 total hits for uber, 15 hits for uberads and 2 hits for ubequity.

An Official Gazette search [5] allows the user to search all marks that were registered or published for opposition on a specific date. The user can also choose to narrow the search to specific terms in specific fields, just like the structured word and/or design mark searches.

Every TESS search provides search results that the user can select to obtain additional data regarding the results.  For example, a basic word mark search for pence now reveals 22 results.  Clicking on one of the results -- pence ranch -- reveals a registered trademark for Pence Ranch wine.  The Trademark Electronic Search System provides information regarding the category of goods and services, the serial and registration numbers, the filing and registration dates, the date of first use in commerce and the owner.

More detailed information about a particular mark can be obtained using another Trademark Office free service, the Trademark Status & Document Retrieval (known as TSDR)[6].  TSDR searches begin with a specific serial or registration number, which can be obtained via a TESS search or on correspondence from the Trademark Office.  Trademark Status & Document Retrieval searches allow the user to obtain the same information as TESS regarding a particular mark, in addition to much more detailed information and correspondence.  The search results also reveal all documents sent to or from the Trademark Office during the prosecution of the mark, as well as important maintenance dates regarding the mark. 

Users can glean valuable information regarding trademark prosecution by reviewing Trademark Office actions and other correspondence.  For example, a search for the term heisler reveals a trademark application for a brand of beer that was abandoned after the Trademark Office refused the mark because it was primarily a surname.  Based on this information, another company seeking to trademark heisler beer could choose to add additional words to the proposed mark to improve the chances of acceptance.

Other Trademark Searches

Although all states maintain lists of trademarks registered in the state, searching state trademark databases is often much more difficult than searching the federal databases.  For example, California requires that the searcher make a specific request directly to the Secretary of State’s office, and the search cannot be performed online.  Because state trademark registration is so cheap -- usually much less than $100 per class -- it is often more cost-effective to simply file a proposed registration in a state without searching the state database. If it’s denied, one can simply re-file an amended application.

Additionally, because there is no requirement to register trademarks in a federal or state database, searches should also be done to make sure that no other entity has common law trademark rights based on the use of the mark in commerce.

Internet searches are the fastest and, often, most effective means of conducting common law searches.  Simply Googling a term and searching the results often shows the use of a term in commerce, even if that term has not been registered.  These searches can reveal business websites, press releases, news stories and other information that can help determine whether anyone is currently using a certain mark.  For example, a Google search for golden donut shows several “Golden Donut” establishments, even though a TESS search reveals no currently active federal registrations.

The Internet Corporation for Assigned Names and Numbers, known as ICANN[7], provides a WHOIS lookup feature at whois.icann.org, which can reveal whether anyone is using a particular mark as part of a website name, along with the appropriate contact people at the company that owns the domain name.

Not surprisingly, several companies offer trademark search assistance for a fee.  Although the free services we already discussed can be very effective, paid searches often locate additional potentially relevant marks.  Companies such as Trademarkia, Legalzoom, Compumark and others have access to their own proprietary databases of registered and common law marks, and their employees are adept at conducting thorough searches and providing detailed search reports.

Trademark Searches

Trademark owners can use a variety of watch services to help protect their marks.  Typical trademark watches include a Trademark Office pending application watch, a Trademark Office Official Gazette [8] watch, state trademark watches, international watches and common law watches.  Trademark owners can conduct the watches themselves, hire attorneys to do so or hire one of many watch companies such as Corsearch or Compumark.

A Trademark Office pending application watch monitors all new federal trademark filings, and a Trademark Office Official Gazette watch monitors all filings that have progressed to the point of publication on the Official Gazette.  Both of these watches can provide trademark owners with the opportunity to catch trademarks that conflict with their own.  Although trademark examiners are usually fairly competent at catching some conflicts, they do not catch everything, and they might not fully understand why a potentially conflicting mark should not be registered.  If a trademark owner learns about a new initial filing that conflicts with his mark, the owner can send a letter of protest to the Trademark Office, asking that the examiner deny the application based on the owner’s earlier rights.  If the owner learns about the conflict later, such as after publication in the Official Gazette, the owner can file a Notice of Opposition with the Trademark Office [9].  Also, at every stage of the process, the trademark owner can attempt to negotiate with the new applicant, who might agree to withdraw or change its application.

State watches and international watches serve the same purpose, allowing trademark owners to stop potentially conflicting marks before they are registered.  Depending on the rules of each particular jurisdiction, owners have various options to pursue once a watch reveals a hit.

Common law watches serve a different purpose -- they assist in identifying potential trademark infringers.  Common law watches include searches in business name databases, searches in domain name databases, internet searches and physical in-store searches.  If a common law watch uncovers a potential infringer, the trademark owner can send a cease-and-desist letter, as we will discuss shortly.

 

Trademark Maintenance

Trademark owners must file certain maintenance documents with the Trademark Office at regular intervals. Failure to do so can result in the cancellation of trademark registration.

Between the 5th and 6th year after the registration date, the trademark owner must file a Declaration of Use and/or Excusable Nonuse under Section 8 of the Trademark Act.[10]  If the trademark is currently in use in commerce, the trademark owner must attest as such. The owner must also list the goods or services in connection with which the trademark is in use and must provide a specimen showing how the trademark is in use.  It must show the trademark in actual use in commerce.  For trademarks on goods, the specimen can be a photo of the mark on the goods, on labels or tags affixed to the goods, on packaging for the goods or on webpages selling the goods.  For trademarks on services, the specimen could be online advertising, television or radio commercials, invoices, business cards or marketing materials.

If the trademark is not in use, the owner must identify the date of last use, the reasons for nonuse, the date when use is expected to resume and the steps being taken to resume use.[11]

After the 10th year following registration, and every ten years thereafter, the trademark owner must file a combined Declaration of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9 of the Trademark Act [12].  In addition to the items detailed previously, this filing must include a written request to renew the registration along with a filing fee.  As of 2019, the filing fee is $425 per class of goods or services if filed electronically, or $725 if filed on paper.

If a trademark owner has continuously used a mark in commerce for five years after registration and if there is no pending legal action involving the trademark in the Trademark Office or a court of law, then the owner can file a Declaration of Incontestability[13] under Section 15 of the Trademark Act.  Once a trademark is incontestable, various aspects of the trademark registration, such as its validity, cannot be challenged.

If a trademark owner becomes aware of potential trademark infringement, the owner may choose to send a cease and desist letter to the infringer.  This letter typically notifies the infringer of the owner’s rights and requests that the infringer stop selling its goods or services. Alternatively, if the owner is comfortable with another entity using the mark, the letter could offer to license the mark for a fee, and with certain restrictions. 

Cease and desist letters should be worded carefully.  The owner could simply ask the infringer to stop its activity or the owner could offer to negotiate a compromise.  However, if the letter specifically lists the infringing goods or services, and if the letter threatens litigation, then the alleged infringer could file a declaratory judgment action seeking a declaration that the trademark is not infringed or is invalid.  Such a lawsuit could unnecessarily increase the cost of enforcement for trademark owner. In addition, the action could likely be filed in the accused infringer’s choice of forum, possibly giving the accused infringer an upper hand in litigation.

Licensing

A trademark license is an agreement between the trademark owner and another person or business, permitting the use of the trademark under certain conditions.  The license agreement should specify the products or services with which the licensed trademark may be used, the geographic region in which the licensee may operate and any quality control provisions regarding the nature of the products or services. 

The license agreement should also specify whether the license is exclusive, sole or non-exclusive.  An exclusive license typically means that the licensee can use the trademark to the exclusion of all others, including the licensor.  A sole license grants rights only to the licensee, but not to the exclusion of the licensor.  A non-exclusive license allows the owner to use the trademark and grant additional non-exclusive licenses to other parties.

The agreement should also specify the duration of the license, the amount and timing of any royalty payments and the consequences of any breach of the license.  In addition, trademark license agreements often include dispute resolution clauses including arbitration provisions, and usually specify a choice of law and forum in case of dispute.

Trademark licenses can be recorded with the Trademark Office to provide notice to the rest of the world of the licensee’s rights.

Franchisors and franchisees often enter into trademark license agreements, and the quality control provisions of the license are typically its most important aspects.  For example, Subway licenses their trademarks to thousands of franchisees throughout the world. The franchisees agree to maintain a certain level of quality in their food, preparation and cleanliness.  Often, franchise agreements can be terminated if the franchisee fails to meet the quality standards.

Abandonment

Registered trademarks require ongoing and nearly continuous use to maintain the exclusive rights in the mark.  A registered trademark is deemed to be abandoned in two situations.  First, a trademark is abandoned if “its use has been discontinued with intent not to resume such use.”[14]  The intent can be inferred from the circumstances.  Nonuse for three consecutive years creates a legal presumption that the mark has been abandoned.  In such a situation, the owner would bear the burden of proving that the mark was in use or that the owner had a bona fide intent to resume use of the mark.

Second, a trademark is deemed abandoned if it becomes the generic term for the products or services with which it is used.[15]  For example, both aspirin and thermos became generic terms and lost their trademark protection.  Other marks, such as kleenex and xerox, were alleged to have become generic.  The owners of these marks ran ad campaigns clarifying that the terms pertained to their specific products, not to facial tissues or copiers in general.

In our last module, we’ll look at remedies that may be available to trademark owners in cases of trademark infringement.

 



 

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