What is a Trademark Search?

A trademark search can, in actuality, be many different things. In theory, a trademark search is performed to determine whether or not the mark you are hoping to use is already taken by another. This allows an individual to apply with a greater level of confidence for the use of a trademark with the United States Patent and Trademark Office (herein referred to as the USPTO). A trademark search is, ideally, a comprehensive, analytical way of researching a name, slogan or logo for prior use.

A trademark search can also be performed in a sloppy and ineffective manner, and may not protect you from potentially infringing upon another?s name or logo. This is why it?s important to ensure that the trademark research you have commissioned is done comprehensively and thoroughly!

It is not unusual for a trademark research company to charge hundreds of dollars for searching the USPTO, which you can do for free. Comprehensive research firms search Federal, State and Common Law records, which is a more logical and thorough way to research your name. When commissioning research on your name, it is important to ask the company you?re considering using to clarify what exactly their searches entail, each step of the way.

Companies may try and save money in other ways, including letting you pour through the raw data they collect without any summary of what it all means. It is important to be sure once you?ve decided to commission research on your name that the information is compiled into an easily readable report. Examining the results of your research can sometimes be difficult, even when placed in an edited report. If you?re left to decipher the meaning of a company?s raw data, chances are you may under react or overreact to the results.

When searching your name, it is important that phonetic spellings of the name are searched, as well as vowel variations. This should be done in order to find any potential matches of your name, whether these matches are similar or identical. Ultimately, the goal of the search is to allow an individual to apply for the searched name feeling as though they are informed, and free of any potential legal ramifications. Unless your search is comprehensive, there is no way to promise the same peace of mind a thorough search can!

Applying for a trademark does not have to be a painful, convoluted process. It can actually be quite easy if you follow the correct steps throughout! Remember, it is a process to research a name.

Marit Lee is a Researcher for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Marit directly at 800.550.1520.

Trademark Issues in the Mobil Auto Business

There have always been trademark issues and lawsuits in the mobile auto service business. I know this because I own several such businesses. We first noticed a competitor in the Mobile Auto Detailing Business, which had a name "Mobile Auto Services" another "Mobile Oil Change" and still another "Mobile Car Care". Mobil Oil Company was marketing at the time their Gas Station Service Centers as "Mobil Auto-Services" "Mobil Car Care" and "Mobil Auto Care."

Mobile Oil even filed one case against a company in Mobile Alabama, which used the name Mobile in its Auto Service Business. These cases occur more often than you think. Many times infringers do it on purpose to get easier name recognition, while at other times it is just coincidence, either way as the World gets closer together you can bet the problem will become more prevalent and more serious.

If you don't think this is an issue, check out this case with Kellogg's "Tony the Tiger" and Mobil Oil Company's "Tiger Mart." I guess you have to ask yourself "Whoooose Great"

http://www.eura.com/steffen/jura/aktuelles/texte/tony_kellogs_vs_exxon_tiger.htm

Whether or not you agree with the verdicts in these trademark infringement cases, the company with the greatest dollars often is victorious. Speaking of Victorious...Victor's Secrets, an adult store, has won a case where Victoria Secret, a 4 Billion Dollar a year marketer of lingerie, was not entitled to seek a cease and desist from the Proprietor of Victor's Secret, whose real name was Bob or something like that.

In the case of McDonalds, they sue just about everyone with anything even closely resembling their name and they have so much case law now that they usually win everything, you might beat them but it would cost you $190,000 +, as was the most recent case where it went to a very high court and McDonalds won anyway.

We have seen previously in California where Oil Max was taken by a San Diego company and the former Oil Max mobile oil change company changed their name to Oil Maxx, with two X's; unfortunate, but true. In a Trademark case at the Federal Level this would not even be possible, first use has rights, but even a federal trademark must be defended otherwise you lose certain rights to it's use.

Now we see again Where Pitts Stop Mobile Oil Change is using a similar paint scheme to the Pitts Stop for this major C-Store Chain where some offices also have Oil Changing. If they are ever going to be in the same market one company will have to yield if both companies cannot agree, problem being that there is a good chance they will be direct competitors, in which case there could easily be a lawsuit. One company he fixed sites are based in Las Vegas and the other is based in Riverside CA that is fairly close and so far neither company is so big that it matters. In franchising such as in Mobil Service Stations, Brand Name means a lot. So to will it in the future as one or more of these companies might make it to a point where there is a confusion. In a down economy there is also a potential for one or more companies to go out of business thus abandoning any use of such a mark therefore making such an example of this type very irrelevant.

Before you go into an auto business or any business for that matter, check on the use of the names and pay attention, these issues are easy to fix before you start, but once you grow large the costs in loss of brand name recognition if you have to change the name could be in the millions, think about it. I know you will.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.

What are Trademarks and Why You Need to Take Them Seriously

What is a Trademark

A trademark can be any word, slogan, design, symbol, or even a color, smell, product configuration or a combination of these, used to identify the source of origin of particular goods and services. The trademark serves as a source identifier of your goods and services, to distinguish it from the goods and services of others. For example, Nike has a registered trademark with the United States Patent and Trademark Office ("USPTO"). Their mark is used to distinguish their goods and services over other shoe companies. Nike actually owns several trademarks, including design marks as well, such as their swoosh symbol.

Here is another example, remember when Paris Hilton was saying "that's hot" everywhere She applied for a trademark application with the USPTO. If it ultimately gets issued, it doesn't mean that no one else can ever say that phrase. Ms. Hilton's trademark attorney has filed the slogan only in connection with particular specified goods and services. Therefore, if the mark does ultimately issue, she will have federal rights to prevent others from using the mark in connection with the same or similar goods and services she registered the mark with.

Why You Need to Conduct a Trademark Search and File an Application

You are ready to launch a new product, or you are about to start a new business and you have a great name you've been wanting to use for years. But can you Here is a typical scenario: Company A opens its doors (a physical store and online) choosing a name without conducting a trademark search. Company A starts promoting its name by investing in advertisements (print and online such as Google adwords). Months go by and Company A is doing quite well financially, has invested a lot money in advertising and marketing, and its page ranking in Google went up considerable for its desired terms (after spending a ton of money to search engine optimization marketing firms). Then one day, Company A receives a cease and desist letter from Company B's attorney similar to this:

Company B is the owner of United States Federal Trademark Registration No. XX and other trademark registrations pertaining to this mark. Company B uses this mark in the United States in conjunction with its goods and services. Company B legally owns the trademark upon which your online store, products, and advertisement are infringing.

Company B believes that you are intentionally trading on the goodwill of Company B by using a trademark that is confusingly similar to Company B's Trademark and that your use of the Trademark does, or is intended to confuse or mislead customers seeking Company B's products or services. This activity is actionable under federal law and causes you to be liable to Company B in every state in which you have made sales or done business. Your activities are unlawful and constitute unfair competition, intentional trademark infringement and dilution, false designation of origin and/or cybersquatting.

Federal Law provides numerous legal remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, monetary damages, claim to a defendant's profits...

So now what You are thinking it can only be a bad dream, I can't stop using the name I've been using all this time. Think again. Although you may be able to fight or settle in order to prevent your name from being taken away, it typically takes time and a lot of money. This is the sad scenario many business owners face when the neglect to take into account intellectual property rights of others.

Rather than being a victim to bad business practices, the proper way to proceed is to obtain a trademark search on each and every name you intend to use in connection with the goods and services your business is promoting. A competent trademark attorney can conduct the search and analyze the results to advise you whether or not you should use the name. If the name appears to be clear, then it is advisable to proceed with your own application for a trademark in order to serve as a defense and to be used offensively against would be trademark infringers.

Upon issuance of your federally registered trademark, you have the following significant benefits:

* Nationwide constructive notice of trademark ownership

* Evidence of and a presumption of ownership

* Federal court jurisdiction (should you have to sue to prevent infringement)

* Federal registration can be used to obtain foreign registration

* The registration may also be filed with U.S. Customs Service to prevent importation of foreign goods that infringe on the trademark

Trademark Issues on the Internet

What about domain name disputes; use of trademarks in Google adwords advertising or banner advertisements; cybersquatting; how about parody or criticism websites like www.starbucked.com; trademark issues with pop up ads; etc. These are all issues that occur everyday online and are costing business owners millions. Each issue can be resolved in different ways, either by the use of cease and desist letters; negotiations and settlement; a traditional trademark infringement lawsuit in either federal or state court; an Anticybersquatting Consumer Protection Act (ACPA) lawsuit; or an Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding.

 2006 Michael N. Cohen, Esq. No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author. Michael N. Cohen, Esq. is a licensed patent attorney and is the principal of the Law Office of Michael N. Cohen, P.C., located in Beverly Hills, California. Mr. Cohen can be contacted at http://www.patentlawip.com or 310-288-4500.