A. U.S. Trademarks
B. Special U.S. Trademark Searches
C. Foreign Trademarks
A. U.S. Trademarks
Application Status
Use the USPTO's Trademark Applications and Registrations Retrieval System (TARR) to determine the legal status of an application. Otherwise, you can call the Trademark Assistance Center at 800-786-9199 (or 571-272-9250 from Northern Virginia).
Assignments
You can look up assignments recorded at the U.S. PTO since 1955 using the PTO's Assignments on the Web.
Cease and Desist Letters
When a company learns about an infringing trademark they generally have their lawyer send a "Cease and Desist Letter" (or "C&D Notice") asking the other mark owner to stop infringing. A database of sample letters is posted at www.chillingeffects.org/search.cgi.
Getting U.S. Trademark Registration Records
The USPTO posts a free database of Federal trademark registration records called the Trademark Electronic Search System (TESS). TESS includes live, dead and pending Federal marks. You can see images. The database is current within a month of filing, and the system permits Basic or Advanced Boolean searching. Very nice.
More recently filed Federal trademarks registrations can be retrieved at the USPTO's Trademark Assignment Research Room in Arlington, VA (703-308-9800).
Fee-Based Alternatives: You can get U.S. Federal and state trademark registration records by searching Thomson & Thomson's TRADEMARKSCAN databases. The TRADEMARKSCAN databases are available through several systems including Dialog (File 226 for Federal searches), Westlaw (FED-TM), and SAEGIS.
Other fee-based trademark research systems include include Trademark Explorer, Name Protect, CSC's ActiveIP, CT Coresearch and Trademark.com, which has a 12-hour subscription option for occasional users.
Finally, as a fallback, I use Lexis, which has all applications filed with the U.S. Patent & Trademark office back to 1884 (TRDMRK;ALLTM). Note: You can't "Get" a trademark.
Getting U.S. File Wrappers
A "File Wrapper" contains all the documents in the U.S. PTO file for a trademark. Electronic copies of many U.S. file wrappers are available through a USPTO Web portal called the Trademark Document Retrieval System. Otherwise, you can hire a company to get copies for you from the PTO.
Internet Sites
The central Internet source for U.S. trademark information is the U.S. Patent and Trademark Office. Other useful Internet sites for U.S. trademark information include: All About Trademarks; Cornell's Legal Information Institute; and the Internet Law Library.
Legal Materials
McCarthy on Trademarks and Unfair Competition provides a good review of U.S. trademark law. The Patent and Trademark Office's Trademark Manual of Examining Procedure (TMEP) and other information is posted on the USPTO's Web site (www.uspto.gov/main/trademarks.htm). The TMEP is also available on Lexis. A legislative history of the Lanham Trade-Mark Act (P.L. 489, 79th Congress, Chapter 540, 2nd Session) is published in Robert's The New Trade-Mark Manual.
The Products Comparison Manual for Trademark Users (BNA Books) by Francis M. Pinckney helps identify cases that discussed the common use of a trademark by two types of business (e.g., a restaurant and a massage parlor).
State Trademarks
Some states post free trademark registration databases too. Links to these sites are posted on All About Trademarks and Research RoundUp: Business Filings Databases. If a state database isn't listed, use Google or another search engine to double check.
You can search registration records for all 50 states using TRADEMARKSCAN on
Dialog (File 246), Westlaw (ST-TM) or the subscription-based SAEGIS, as well as some of the other systems listed in the "Getting U.S. Trademark Registration Records" section, above.
Trademark Trial and Appeal Board
The PTO post information by and about the Trademark Trial and Appeal Board (TTAB), including final decisions. Final decisions are also published in BNA's United States Patent Quarterly, which is available on Lexis (BNA;USPQ) and
Westlaw (USPQ). Documents filed in trademark disputes before the Trademark Trial and Appeal Board are available through the TTAB Inquiry System, which should be comprehensive starting in 2003.
B. Special U.S. Trademark Searches
Preliminary and Comprehensive Searches
U.S. law permits a person to acquire rights to a trademark through registration or common law use. So to see if a trademark is available have to check both the registration databases discussed above and common law use.
I have often been asked to do a preliminary search to see if a mark is in use. This entails searching (1) the federal and state registration databases discussed above, (2)the Internet using several good search and engines and (3) additional reasonably priced databases to find common law uses in the news, published judicial opinions, domain names, etc. The preliminary search should pick up any obvious uses, and it may make a comprehensive search unnecessary.
TIP: Dialog's BRANDNMS (comprised of these databases) provides a good foundation for a common law search. BRANDNMS includes the TRADMARKSCAN registration databases, so you can search them both in one shot. If you want to search just the common law materials, use the command file "b BRANDNMS not TMKS," instead of just "b BRANDNMS" when you choose your database.
To really need to clear a mark you will need a comprehensive trademark search. Comprehensive searching is generally done by private companies, such as Thomson CompuMark (800-692-8833), formerly Thomson & Thomson, and Government Liaison Services (800-642-6564).
Litigation Searches
LitAlert (on Dialog File 670) and the free Who's Suing Whom database (on The Translation Station) may be able to tell you if a company or an individual has been or is currently involved in trademark litigation.
C. Foreign Trademarks
Getting Foreign Trademark Registrations
Good databases for for finding and pulling foreign trademark registration records include AvantiIQ, Trademark Explorer, Trademark.com and Thomson & Thomson's TRADEMARKSCAN, which is searchable through SAEGIS, Dialog and Westlaw. CT Coresearch has databases for Canada and Mexico.
In addition, Canadian registrations are posted for free by the Canadian Intellectual Property Office, along with a considerable amount of useful information, including a sample registration form. A searchable database of Australian trademark records is posted by IPAustralia. Irish trademark registration records are searchable on Dialog (File 676).
You can search for international trademark registrations through the Madrid Express. For information on the Madrid Agreement and the Madrid Protocol, see International Trademark Law - The Madrid System By Vicenç Feliú.
Foreign Legal Materials
For information on the copyright laws of individual foreign countries see the WIPO Guide to Intellectual Property Worldwide and/or West's Trademarks Throughout the World, which is available as a hardcover book or on Westlaw (TMWORLD).
English versions of the trademark laws of most countries are published in Industrial Property Laws and Treaties of the World. Trademark laws enacted after 2000 are posted in WIPO's Collection of Laws for Electronic Access (CLEA) database.
Researching Intellectual Property Law in an International Context, by Stefanie Weigmann, links to foreign and international trademark laws posted on the Web, including a country-by-country listing in the second half of the article.
The Canadian Trademark Act and the related regulations are posted on the Internet by the Canadian Intellectual Property Office.
Oceana Publications' Trademark Practice and Forms explains how to register copyrights abroad, as does the extensive Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World, published in The Netherlands by Manual Industrial Property B.V.
For company name law, check out the International Trademark Association's Protection of Corporate Names: A Country By Country Survey.
For additional information sources see "Foreign Laws."
