A trademark is a word, phrase, symbol or combination identifying a product or service in the marketplace. This covers logos, marketing slogans, brand and trade names. In some circumstances, the trademark can cover colors or smells. Registered trademarks are trademarks granted additional legitimacy by the appropriate government agency. Common Law trademarks ('unregistered') are also protected, to a lesser degree. Both can be used to stop others using identical or similar marketing slogans, logos, brand and trade names.
In most countries but not all, registration of a trademark is not required to gain legal protection. Most trademarks are not registered, and enjoy considerable 'common law' legal protection under trade practices or fair dealing legislation. For this reason a trademark search must reach beyond the national registered trademark database, to search brand names, business names, and other sources of trademark usage.
To quote the Trademark FAQ by the USPTO:
A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration.
Should you want to learn how trademarks are created, used and defended, these are the best sites to visit:
One of the most invaluable resources in serious trademark research is access to several of the very large commercial trademark databases.
In addition to the database retailers and producers, there is a lively industry of trademark search assistance.
There are numerous commercial firms on the internet selling trademark services; much of this is little more than an ad for trademark related litigation.
MicroPatent (www.micropat.com) offers access to a proprietary trademark database. More information coming.
Watching services are another possibility: These are not expensive but following the leads suggested will be. I can not yet advise you on a reliable trademark researcher.
As a case in point, IP Australia provides a Business Names Applicant Search Service. A$40 buys you a search of the Australian registered trademark database by their trained staff. Contact IP Australia directly for this (Tel Au: 1300 651010) - they accept credit cards & fax/postal applications.
Trademark law is designed to protect consumers from confusion. The law can work to protect business investment in brands & slogans but only if the business behaves in particular ways which protect consumers from confusion: actively using the trademark, working to restrict the trademark from becoming generic, routinely searching for unauthorized use.
For a very clear description of trademark use, and the responsibilities of trademark owners, read the short webpages A Guide to Proper Trademark Use, and How are Marks Protected both by Gregory Guillot.
Trademark Law has implications for searching:
Just because a potentially conflicting trademark has been found does not mean it should concern you. It may be simple to show or argue that trademark ownership has lapsed and become abandoned unintentionally.A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration.
The system may appear particularly legalistic, and it is. Recent Australian Trade Marks Office Decisions information ultimately supplied by IP Australia, displays this vividly. However, much trademark activity is self-evident. In Australia, A$350 and a minimum of seven and a half months will usually earn you a registered trademark. Should you choose a trademark and find another has used it, you will most likely receive a 'cease & desist' letter and forfeit the value you may have invested in the trademark.
This leads us to the importance of commercial trademark databases, watching services and other commercial services. Searching both prevents investment in an unusable trademark and inadvertent infringement by others - a responsibility of trademark owners.
Originally, all goods and services were broken down into 42 classes. These classes are international divisions organized by WIPO (World Intellectual Property Organization), so are the same from country to country. Registered trademark documents will explain at length the types of products & services covered by a particular trademark.
There is some bleeding between categories, and trademark examiners are unlikely to grant requests for nearly identical trademarks in similar categories but class plays a role in granting trademarks.
Recently it became necessary to list specifically the products or services to be covered, and the 42 classes have been expanded to a collection of specific sub-classes, which is reminiscent of patent classification but far less useful.
Class is important as trademarks are class-specific. You can search by class in certain registered trademark databases but this is not particularly a good search technique: you are far too likely to miss a comparable trademark.
1_ To find existing trademarks similar to one you plan to register.
This is further explained in the help files by IP Australia. Look under the left-hand category "Why Use ATMOSS?".
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