Intellectual Property Law

Chapter 3 Lecture Notes

Major points to be addressed in the chapter include the following:
1. Selection of marks can be done by a company in-house (through contests or in-house
marketing departments) or a company can retain an outside research firm to create
and develop a mark. Software programs also help with trademark creation.

2. Once a mark is selected, it should be screened and evaluated for its use and
registrability.

3. The proposed mark should be carefully reviewed to ensure it is not descriptive, it is
not primarily merely a surname, and so forth.

4. The mark should then be subjected to a search so that it can be determined that it is
not confusingly similar to another registered or applied-for mark.

5. A search will also provide preliminary indication as to whether the mark is strong or
weak. If the search discloses numerous similar marks, this indicates there should be
room for another similar mark. On the other hand, such a weak mark in a crowded
field will mean that the mark will be deserving of less protection than a strong and
unique mark and that unless a nearly identical mark is used in connection with
identical or highly related goods and services, the owner will not be able to preclude
others from using a similar mark.

6. Although there is no statutory requirement to conduct a search, cases have begun
indicating that failure to conduct a search might contribute to a finding of bad faith or
willful infringement in certain instances, which might lead to imposition of attorney
fees and other damages. Failure to perform a search, standing alone, does not usually
constitute bad faith.

7. There are a variety of ways to conduct searches: Professional search companies
maintain significant trademark databases that can be checked (law firms practicing
trademark law purchase subscriptions to these databases so they can log on and
access the databases); some companies sell CD-ROM discs to firms so they can
conduct searches; and the USPTO database lists millions of pending, registered, and
dead marks.

8. A preliminary or knockout search is usually one conducted solely of the USPTO
records (and perhaps publicly accessible databases such as found through a Google
search) and is intended to eliminate or knock out identical or nearly identical marks.

9. If the knockout search indicates the mark may be available, a full/comprehensive
search should be conducted, using the services of a professional trademark search
company. The full search will review USPTO records, state records, journals and
magazines, Internet domain names, Internet usage, social media usage, phone books,
directories, and other sources. Some foreign countries allow free searching of their
trademark office databases, and WIPO offers direct linking to the databases of
trademark offices of the EU and several foreign countries.

10. When the written report is provided by the search company, it should be evaluated
and the results communicated to the client.

11. If the report discloses conflicts, they may be investigated (through the use of phone
calls, Internet research, or visiting the site to see how the mark is used). Negotiations
may be conducted with the owner of a conflicting mark so the client receives
permission to use (or perhaps purchase) the mark.