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Lesson 1: Locating a Known Trademark

Lesson 2: Preliminary Screening Search

Lesson 3: Determining Trademark Ownership

Lesson 4: Refining Trademark Searches

Lesson 5: Using the U.S. Trademark Files

Lesson 6: Conducting a Trademark Watch

Lesson 7: Locating Domain Names

Lesson 8: Wrapping Up the Course

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Determining Trademark Ownership (cont'd)

To answer Ray's query, we want to search for one of the owners of Legoland — Kirkbi.

We have already done searching using prefixes, also called "field labels", in Lessons 1 and 2. Exact Trademark (ET=) and Rotated Trademark Text (TR=) are two examples of prefixes. There are many other data elements in a trademark record that can be searched, such as the date a mark was registered, which companies are associated to it, and which classes it falls under.

A list of the field labels for any Dialog database can be found by reviewing the detailed documentation for it, called the "Bluesheet." We can use Dialog Bluesheets for TRADEMARKSCAN U.S Federal (File 226), for example, to find the prefix for a search when a trademark was registered (DR=) or who the legal counsel is (LR=).

In the case of searching by owner, the Dialog Bluesheet reveals that there is more than one search prefix that can be used. "Last Reported Owner" (ON=), "All Owners" (past or present) (OW=), and "Named Company" (CO=) which includes any company name appearing in a trademark record, not just the owner (e.g., law firm representing the trademark applicant).

To begin our search for Kirkbi, I review the Bluesheet and determine that the correct search prefix is ON= to search for "Last Reported Owner."

Enter the Dialog command SELECT in the command text box followed by the two-letter prefix (ON=) and the company name. This search will retrieve all marks currently held by Kirkbi.

select on=kirkbi

Begin Databases screen shot

We create one set of records shown in our search history screen below.

Search History Screen

The EXPAND command, illustrated in Lesson 1 for the Exact Trademark search, could also be used for company name searches:

expand on=kirkbi

Go to the next page.

3-3

Learn More #3:

You can identify specific types of owners by using different prefixes.

Use OW= to retrieve marks that are or have been owned by a specific entity.

Example: s ow=(colgate(w)palmolive) retrieves marks currently and previously held
by Colgate-Palmolive Co.

Note: See Lesson 4 for more details on OW= searching.

Use ON= for the last reported owner. This refers to the last reported owner listed at the U.S. Patent and Trademark Office (USPTO). Note that there may be assignment transactions never recorded.

Example: s on=sony retrieves Sony Corp.'s current marks

An ON= search will find a party appearing as:

Original Applicant
New Owner Before Publication
Owner at Publication
New Owner After Publication
Original Registrant
New Owner Entered After Registration
Last Listed Owner

Due to the nature of owner information recorded at the USPTO, some records may not contain all owner types.

Use CO= to search by Named Company to find a party's name in any owner-related field, including USPTO Trademark Trial & Appeal Board petitioner and legal contact fields.

Example: s co=raytheon retrieves all corporate references to Raytheon Co.

Covered are:

All owners (OW=)
Opposer (OP=)
Petitioner in Cancellation Action (PE=)
Plaintiff in Interference Action (IP=)
Plaintiff in Concurrent Use Action (UP=)
Filing Correspondent (LR=)

Note: Use the EXPAND command to locate variations of the same name that may appear differently in different records. However, SELECTing will help yield the name anywhere in an owner field. See Lesson 1 for more detail on EXPAND.

Learn More #4:

The owner name can be searched in two ways. We can use the EXPAND command as we did in Lesson 1 for Exact Trademark to identify the spelling of the owner. For example:

EXPAND OW=Procter & Gamble

The preferred method, however, is to SELECT your search terms as in the following example for Procter & Gamble:

Example:

s ow=(proct?r (1w) gamble)

Note the following: Since names of owners are stored on Dialog as individual words, "free text," we use proximity operators, such as (w), (n), (#n), or (#w), to search multi-word owner names, as shown in the previous example.

Search Tip 3-1:

Use all possible spellings of a company name (e.g., gambel or gamble).

Include internal truncation (e.g., proct?r) to take the place of one letter in a word.

Use truncation at the end of a name to account for plural names.

Place synonyms in parentheses.

Search Tip 3-2:

Since all searchable owner fields are free-text, we use proximity operators, such as (w), (n), (#n), or (#w), to search multi-word owner names.

Example:

s direct(w)hit(w)technolog?

Search Tip 3-3:

Search for the most distinctive part of a name (e.g., sony).

Don't include "corp.," "inc.," "co.," etc.