A. Assembling Background Information

1. ____ Record date of request, contact person and proposed mark.

2. ____ Identify proposed goods/services.

3. ____ Identify proposed International Class(es).

4. ____ Determine nature and form of proposed mark, for example:

  • is it a word mark only, in standard characters?
  • is it a composite word and design mark?
  • should design elements be included in the search? in what colors, or in black and white?
  • will mark be used as a slogan or tagline?
  • will mark be used with other marks? with a house mark?
  • is it a certification mark or collective mark?

5. ____ Determine possible factors affecting nature of mark, for example:

  • any meaning in any other languages?
  • is the mark an acronym, and if yes, for what?
  • any meaning in the relevant industry or trade?
  • geographic significance?
  • surname significance?
  • is the mark descriptive of the goods or services, or any function, feature or characteristic of the goods or services?
  • synonyms?

6. ____ Determine nature and extent of expected use on Internet.

  • as a domain name?
  • in advertising or marketing the underlying goods and services via the Internet?

7. ____ Identify countries where goods or services bearing the mark will be offered or sold, noting those countries (a) where rights are obtained solely through registration, and (b) where registration of the type of mark (e.g. slogan) may be an issue.

8. ____ Determine all jurisdictions where mark has already been used, if any (states and/or countries), and dates of first use where relevant.

B. Conducting Preliminary Screening Search

1. ____ Conduct online trademark register searches for countries of interest where online searching is available, noting registers searched and parameters of searches (e.g., Classes, specific goods/services, spelling variations, synonyms covered).

2. ____ For each identical or closely similar mark found on each register, itemize mark, application or registration number, owner, Class, goods/services, and status (live or abandoned).

3. ____ Conduct online searches for uses of identical or similar names or marks, noting search engines and search terms used.

4. ____ For each identical or closely similar name or mark found, note search engine used, record name or mark and owner, and print or bookmark page(s) showing uses of name or mark.

5. ____ Conduct searches using online encyclopedias and dictionaries, noting sources searched, and any relevant results.

6. ____ Conduct domain name registration searches for domain name registrations matching the proposed mark, in relevant gTLDS and ccTLDS; search for active websites using registered domain names, and evaluate for possibly conflicting uses.

7. ____ Note any internationally-famous marks found through this preliminary screening process that are identical or closely similar to the proposed mark.

8. ____ Report results (see Part E below).

C. Instructing Comprehensive or Full Screening Searches

1. ____ Identify relevant countries.

2. ____ Select research company or local associates in relevant jurisdictions.

3. ____ Provide research company or associates with identification of all goods/services/classes to be searched, including all related to the uses proposed for the mark being searched.

4. ____ Provide research company or associates with known translations of mark (both literal and foreign-language equivalents), and acronym definitions, if applicable.

5. ____ For each search, record date ordered and specific instructions supplied.

D. Evaluating Full Search Results

1. Gauge Proposed Mark

____ How likely will problems be? Consider:

  • How high a profile will the mark have in the industry/market?
  • Will the proposed mark serve as a name of a company/division?
  • How important will the mark be to sales and marketing?
  • Will it be a house mark?
  • Will it be a subsidiary mark for an aspect of the goods/services?
  • Is there flexibility to consider further distinguishing the proposed mark by adding a distinctive word, design elements, or using the proposed mark with a house mark?

____ How expensive will it be if problems arise?

  • Extensive investment at stake?
  • Logistical issues?

2. Review Search Strategy

___ Were known third-party marks disclosed in the search?

___ Can you identify any spellings or kinds of marks the search strategy may have missed?

3. Initial Review of Search

____ Flag all relevant entries (marks, names, domain names, etc., live and dead, registered and not registered) that are sufficiently close in sound/meaning/or appearance for goods/services at all related to proposed goods/services.

____ Flag identical marks that may be well-known.

____ Double check for a pattern of "abandoned" marks similar to the proposed mark.

____ Double check the search to be sure nothing is missed.

____ Select marks that warrant special review.

4. Special Review of Marks of Possible Concern

____ Check if applied for/registered in jurisdiction(s) of interest.

____ Check for problems during application process.

____ Consider if mark is famous, unique, or a house mark, so as to be entitled to broader protection.

____ Check owners:

  • Deep pockets?
  • Check for any signs that an owner zealously protects against thirdparty marks, such as by filing oppositions, cancellations

5. In jurisdictions that recognize common law rights, and jurisdictions where there is cancellation for non-use:

____ Consider whether goods/services in use appear broader/narrower than those registered (additional investigation may be required -- see follow-up investigations below).

____ Consider where mark is used, and whether mark is used at all (additional investigation may be required -- see follow-up investigations below).

____ Consider whether foreign mark may be used in jurisdiction of interest (additional investigation may be required -- see follow-up investigations).

____ Consider if domain name may also be used as mark (additional investigation may be required -- see follow-up investigations).

6. ____ Report results (see part E below).

E. Reporting Search Results

1. ____ Consider form of communication:

____ Do deadlines/other concerns call for an oral report?

____ Should a written report also be provided?

  • Helps insure accurate communication
  • Gives opportunity to provide explanations, attachments, and links where helpful

____ Consider attorney client privilege – who should receive the report, and what privilege notices should be used?

2. ____ Consider elements of advice:

____ Begin report with conclusion on the level of risk

____ Note any distinctions between degree of risk of being sued, and risk of losing if sued.

____ Note any applicable distinctions between risks of registration and risks of use without registration.

____ Suggest potential adjustments where they may help lower risk, including --

____ Adding (or avoiding) distinguishing material for use/application of mark:

  • House mark
  • Other distinctive term
  • Logos
  • Fonts
  • Trade dress

____ Adding (or avoiding) the following:

  • Particular goods/services
  • Particular channels of trade

____ Possibility of making fair use of term descriptively, avoiding all trademark use

____ Explain scope and limitations of search and advice (can be done in a standard memorandum and attached to report).

____ Explain any terms used that the recipient may not understand.

____ Suggest filing one or more trademark applications where that is the recommended course of action, noting possible advantages of securing earliest possible filing date.

____ Suggest potential follow-up investigations where applicable.

F. Steps For Potential Follow-Up Investigations

1. ____ Identify third party names and marks for potential investigation in countries that recognize trademark rights arising from use.

2. ____ Determine type of investigation, if any, in accordance with all applicable ethical considerations:

  • Internet
  • "in use" investigation performed by research company
  • financial information from Dun & Bradstreet or other financial information vendor
  • discreet private investigator

3. ____ Instruct or conduct investigations, if any, noting instructions given/methods used.

4. ____ Itemize investigation results, if any:

  • ____ Note marks found to be in use, and information available on goods and services used, scope of use (both geographic and sales volumes), dates of first use, channels of trade, types of consumers, other information
  • ____ Note marks found not to be in use, including information available on whether mark was ever used and, if so, date use stopped and whether there is any evidence of intent to resume

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.