DELVACCA, in conjunction with its Intellectual Property Committee, presents

1. DELVACCA, in conjunction with its Intellectual Property Committee, presents Tips and Traps of Trademark Searching DELVACCA thanks Flaster/Greenberg P.C. for their generous sponsorship of this event.

2. Tips and Traps of Trademark Searching By: Jordan A. LaVine, Flaster/Greenberg P.C. Panelists: Alex H. Plache and Jordan A. LaVine

3. Why do we Search? • Availability • Registrability • Enforceability • Corporate Name Clearance • Design – How Will it Look in Use? • Major Product Introduction/Limited Purpose • Is the Mark Already in Use? • Advertising Use Only? • Cease and Desist Issues • Due Diligence for a Transaction

4. Do We Have To? Failing to search does not inevitably result in a finding of bad faith, but is considered when evaluating the adoption of a mark – “willful indifference,” “intentional blindness,” “blind disregard.”

5. Why You Should • Commercially Reasonable • Customary • Affirmation of Good Faith • Cost

6. Procedure • Have a Process • Ask Questions: • Verify Spelling • Determine whether mark contains design element or stylized lettering • Is the mark already registered? • Is the mark already in use? • Does the mark have significance in the relevant trade or any geographic significance? • Are there any similar marks currently in use? • What are the goods/services to be covered? • What are the goods/services used for?

7. Timing • Communicate with marketing/the client • Turnaround • Who will perform the search? • Method of reporting the search results

8. What Type of Search? • Internet Search • Is an online search ever enough? • Preliminary Trademark Search • “Knock out” Searches: Do you stop after a “knock out”? • US Comprehensive Search • Design Searches • Foreign Searches

9. Where Do I Search • USPTO.GOV • Dialog/Saegis/Trademark.com • CSC/CCH-Corsearch/Thomson Compumark • Determine strategy • Define the search for the vendor • U.S. or broader geographic scope

10. Search Strategies • Keep your searching goal in mind • Be creative; use phonetics • Search homonyms, synonyms and abbreviations • Corrupted spelling • Don’t ignore inactive references

11. Design Searches • Design Codes • Colors • Smells • Sensory marks have no “drawing” • Description

12. The Comprehensive Search • Search Strategy • Contents • Federal applications/registrations • State registrations • Shepards citations • Common law (unregistered uses) • Domain Names • Internet Uses • Business Names

13. Registering Domain Names and Trademarks • PTO says that you cannot register URLs (e.g., abc.com) unless also used as a mark (e.g., Amazon.com

14. Analyzing Search Results • Keep in mind who the client/owner/user of the mark is/will be • Analyze search strategy • Likelihood of confusion • Similarity of Marks • Strength of Marks • Similarity of Goods/Services • Similarity of Channels of Trade • Similarity of Purchasers/Users • Purchaser/User Sophistication • Evidence of Actual Confusion • Intent in adopting the Mark

15. Analyzing Search Results • Review goods and services for relationship to those searched • Dilution • Mark must be “famous” to qualify for protection. • Such marks are protected from dilution by blurring or tarnishment. • Dilution is the lessening of the capacity of a mark to function as an identifier of a single source.

16. Analyzing Search Results • Descriptiveness: does the mark merely describe the nature, purpose or characteristic of the product or service (e.g., CHAPSTICK for lip balm)? • Genericy: does the relevant public understand the term to indicate the genus of the goods/services (e.g., ELEVATOR or ASPIRIN)? • Functionality: is the mark a useful product feature (e.g., the shape of a coffee filter)?

17. Analyzing Search Results • Deceptiveness • A mark is deemed deceptive if it communicates something about the product that is false and the statement is likely to be believed by purchasers and the false impression is material to purchase.

18. Analyzing Search Results • Crowded field? • Addition of housemark? • Aggressiveness of trademark owner • Abandoned applications and cancelled registrations • Domain Names • Determine whether follow up searches/investigations are needed • Foreign Availability

19. Madrid Protocol • Longer period of uncertainty • Even if the mark is being cleared in the U.S., searching for International applications for extension of rights to the U.S. may be prudent • Consider follow-up • WIPO searches should not replace local country searches

20. Investigating References Resources • Internet; Google; whois domain name searches • lexis/nexis; D&B; state corporation records • private investigation services • file wrappers (uspto.gov – “view documents”) • Litigation/administrative proceedings in TTAB • Phone calls

21. Search Limitations • Errors in the databases • At the PTO • In the State records • Searching company • U.S. delay • Foreign delay • Design marks • Assignments • “Gone but not forgotten”

22. Reporting the Search Results • Oral – may be quicker and cheaper, but may be misinterpreted and may not be relied upon in litigation (no record). • Written – creates a record, may be relied upon, can explain new or difficult concepts, less chance of misinterpretation • What should it look like? • Use of Search Guide

23. The Art of the Search Opinion • Identify databases searched, scope and currency • List the most relevant references • Reach a conclusion and give a recommendation • % Likelihood of success • Reasonable/Moderate business risk? • Distinguish between use, registrability and protectability • Address the client’s plans – e.g., foreign plans?

24. Conclusions • Keep up to date • Have a process • Communicate with marketing/the client • Increase value

25. Thank You!