Support : Publications : Chronolog Archives : Mar/Apr 2003

Trademark Due Diligence Searches: A Must for Brand Management

An important aspect in any company is to protect the brand identity of its products. Imagine that you have been assigned the task of locating and identifying the current status of your company's or client's trademarks. The reason for the task is to develop an ongoing program to protect the brand identity embodied in those marks. However, you don't want to stop there; it is important to recognize that "common law," or unregistered trademarks, are also legally protected. Common law dictates that a mark that is used in commerce has rights, in the same way that you have some rights in your own name, even though not very many people register their names as trademarks!

Due diligence is an integral piece of intellectual property practice and brand management. The generally accepted definition of due diligence is "any research, maintenance and documentation that protects your company from infringement litigation." Activities that are a part of due diligence include pre-filing strategy evaluation searches for prior art, by searching trade magazines and newsletters, as well as post-filing searches to protect a potential mark from administrative glitches and infringement. Adding to the complexity are those instances where a brand is widely used in a specific geographic area but not registered, and the Internet, which has provided an opportunity to market and brand consumer goods without a traditional brick and mortar business and where the only registration required is the domain name. Common law marks and domain names, which are registered via competing, non-governmental agencies and are loosely regulated, are now "de rigueur" considerations when determining brand strategy. For these reasons, it is imperative that intellectual property as it relates to trademark activities is researched, updated, and documented.

Dialog has the content and search features, such as Dialog OneSearch® categories, the REPORT command and Dialog Alerts, to make trademark due diligence searching easier and to help keep intellectual property portfolios up to date.

Two comprehensive OneSearch categories provide the best option to obtain a comprehensive view of your intellectual property portfolio. The first of the OneSearch categories is TMKS, which includes TRADEMARKSCAN – U.S. Federal, U.S. State, Community Trademarks and the International Register files, as well as the recently added Domain Names database (File 225). Another helpful category is COMMON, which contains several marketing and trade databases from Gale Group, including PROMT® (Files 16, 160), Trade & Industry Database™ (File 148), Marketing & Advertising Reference Service® (File 570), and Newsletter Database (File 636), Consumer Reports, (File 646), TableBase™ (File 93), and Brands and Their Companies (File 116). These databases are useful for searching for common law trademarks.

All of these resources will help a company to compile a complex picture of its brand and position in the market. Consider the example of Company Y, a small local U.S. company. Company Y registers its mark at the Secretary of State in its state of incorporation, which is where it is actively marketing its goods and building goodwill. There are two potential issues that are easily discoverable by its marketing or legal department. The first issue is that the mark is already in use in another state or geographic region. This is not particularly troubling if the company wishes to remain a small, local company. However, if Company Y has dreams of expansion and growth, then the discovery of the competing mark through a due diligence search using the TRADEMARKSCAN – U.S. State and Federal files (Files 246 and 226) has the potential to save the company not only millions of dollars but also the goodwill instilled in its brand. Typical trademark searching using term rotation (TR=) and truncation afford searchers the best chance of locating even obscure marks, and users can also couple these terms with classification codes and even design codes.

1. Trademarks. Identifying marks when maintenance fees are due is an important part of keeping a company's intellectual property portfolio current. For maintenance of registered marks, the following search using the REPORT command will present information that will tell you at a glance which marks are due for maintenance under Section 8 of the Trademark Act. To compile the original, or baseline, report, use TRADEMARKSCAN – U.S. Federal (File 226) in the following search:
   

   File 226:TRADEMARKSCAN(R)-US FED OG=030121/AP=030103 (c) 2003 Thomson & Thomson Set Items Description --- ----- ----------- ?select tr=trademark? S1 313 TR=TRADEMARK? ?select et=trademark S2 13 ET=TRADEMARK ?select (s1 or s2)/active 180 S1/ACTIVE 4 S2/ACTIVE S3 180 (S1 OR S2)/ACTIVE ?report s3/tx,rn,on,dr/all

   
   
   The second issue is Internet commerce. Rare is the company that does not have an Internet presence. As part of due diligence it is prudent to discover if another company is using an Internet address that is easily confused with yours, such as companyx.net, or that can be used to disparage your brand, such as companyxsucks.com. These days it is also good strategy to preemptively register negative domain names, such as companyxsucks.com, in an effort to prevent others from benefiting from your brand. The Domain Names file allows searching using the phrase and word indexed TR= field to find potential brand conflicts and provide a history of that domain name.
   
   
2. Domain Names. Maintaining a registered domain name is an important task for businesses. Stories abound about companies that have lost their domain name as the result of an administrative oversight or a failure to register a domain name.
   

   File 225:DIALOG(R):Domain Names (c) 2002 Dialog & SnapNames. Set Items Description --- ----- ----------- ?select et=trademark S1 853 ET=TRADEMARK ?select trademark/do S2 853 TRADEMARK/DO ?select tr=trademark? S3 7681 TR=TRADEMARK? ?select s1 or s2 or s3 853 S1 853 S2 7681 S3 S4 7681 S1 OR S2 OR S3 ?select s4/whois S5 3816 S4/WHOIS

Setting up an Alert in TMKS and COMMON for ongoing due diligence is an economical way to update your baseline information. When you execute your search strategy, searching on the company name, the mark, or both, take a few minutes to set up a multifile Alert. The Alert will deliver information to your e-mail inbox will provide a continuous flow of new data.

It is important to find the proper critical information in a timely manner, and Dialog is particularly powerful for investigating common law trademarks or unregistered marks currently in use. Further information is available from any Dialog Knowledge Center.

Jeannie Beeston, Knowledge Center USA
Ron Kaminecki, Director, Intellectual Property Market Segment

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