"A patent document is unlike any other technical article,
since it performs a dual function -- as a legally binding
description of the scope of a piece of intellectual property, and
as a technical disclosure to third parties of how the invention
works. Consequently, the language used is a compromise between
legal and technical jargon. A patent agent will never call a
spade a spade if they can call it a 'substantially planar
earth-moving implement with coaxial leveraging means.'" ~ Stephen
Adams
"A culture of litigation, circumvention, and secrecy has
evolved from an area where openness and law had long ruled." ~
Michael S. Malone
Patent 1 was issued in 1836. Earlier patents were not numbered, although the first U.S. patent was issued in 1790. About 10, 000 patents were issued between 1790 and 1836. In FY 2005, 165,485 patents [151,079 were utility patents] were issued and 406,302 applications were received.. On 14 February, the Patent Office issued patent number seven million to "DuPont senior researcher John P. O'Brien for 'polysaccharide fibers' and a process for their production. It took 75 years to get from patent number one to patent one million. It has taken less than one-tenth of that time to go from six million to seven million patents.
In 2004, the top five private sector patent recipients were:
Patents use their own unique language so terms often do not
reflect common usage. Patent language is designed to prevent
competition and withstand legal challenge. For example, "the
words 'comprising' and 'consisting of' seem to be nearly
identical in normal English, but in patent law the former means
having at least certain properties and the latter means having
only those properties." The noun comes first and then any
modifiers. Industry specific terms are often found in patent
claims so the searcher must be familiar with current industry or
scientific field terminology. Appropriate websites are helpful.
Personal names are often reported differently at different times,
i.e W.C. Robinson, William Robinson, Bill Robinson, William
C. Robinson, and William Chandler Robinson.
Claims are the heart of the patent or trademark application
and each claim must be one sentence long. Some claims contain
many words.
Different patent classification codes are used in different
countries. Foreign and international codes may be found at the
WIPO
website.
The volume of patent requests has notably increased. More than
375,000 applications for patents and trademarks are received each
year. The PTO awards about 3,500 new patents and 2,000 trademarks
in a normal week. The typical examiner is given about 20 hours
per patent and that is often inadequate to search prior art.
Typical scientific patent applications range from 20 to 40
pages.
Patents are based on four principles:
The Trilateral
website allows searching of U.S., Japanese, and European
patents. Espacenet
is the major website for searching foreign [U.S. patents
too] patents. You may search patent databases for several
countries or a particular country.
The United Kingdom Patent
Office allows users to search the last two years of six
(non-U.S.) patent databases.
The University of Central Florida Libraries has a good, quick tutorial on researching U.S. patents on the web [includes clear, helpful illustrations].
Pat2PDF allows searching by patent number. Can search multiple patent numbers at once. Free PDF copies of all issued U.S. patents.
Free Patents Online allows boolean or patent number searching of patents since number four million. Free PDF or TIFF copies.
While Google will not provide a PDF or TIFF copy of a patent, you can use it to do directly to the patent in the USPTO database.Bad Patents examines
in some detail bad or invalid patents from the software creator
perspective.
The Duke University Libraries have a helpful Patent Information and Patent Searching web site.
Findlaw
has a comprehensive intellectual property page.
The Intellectual
Property section of the Franklin Pierce Law Center website
includes an excellent collection of patent websites.
Inventor oriented sites, such as the Patentcafe, often provide useful advice. Good news, articles, and advice.
The Patent Crib sheet tells you how to "do" patents.
The Patent Information User's
Group includes links to many patent websites.
Patentlawlinks .com provides a reasonably comprehensive list of patent law links, including foreign sites.
The Richard McKinney Engineering Library at the University of Texas has an excellent patent searching tutorial. Well worth a visit.
The Patent Room, the art of industrial design, is a museum of early design and illustration found in patent applications from the 1920s through the 1950s. Curious and interesting. Patentlysilly.com features odd and curious patents. Subject browsing.
Article 1, Section 8, Clause 8: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
The original focus was on the individual inventor or writer and not work done for hire. Over the years, the cost of litigation and the nature of the process has come to favor the large corporations. There is considerable tension between helping society and providing an incentive for creating intellectual property. Concern about expensive prescription medication is a good example. Historically, information professionals have favored maximum access to intellectual property and tend to minimize the exclusive right incentive.
The Federal government grants the inventor a short monopoly [17 - 20 years] in exchange for a written description of the invention that becomes a public record and will be available for others to use.
Patent law is in Title 35 of the United States Code. Patent and trademark regulations are in Title 37 of the CFR.
With the dramatic increase in multi-national corporations and the global village, intellectual property rights need to be international. It does little good to hold a monopoly in the U.S. if another firm can manufacture your product without your permission in other countries. U.S. patents, trademarks, and copyright are no longer adequate.
The scope of intellectual property is also changing. Living organisms are now patented. The "look and feel" of computer software is also being patented. The variety of patentable products appears to exceed the ability and the knowledge of the Patent and Trademark Office [PTO].
We naturally think of inventors for patent information and business people for trademarks. However, researchers in the sciences often use patent literature as part of a literature search. Historians find patent files useful in studying technological and economic history. Family historians may seek information on family members. Increased emphasis on cost recovery and external funding, especially in the life sciences, have forced university faculty, and certainly their administrators, to become proprietary about their research.
Who needs information about patents and trademarks?
How often will most people use an intellectual property information source?
The noted judge Learned Hand, found invention to be "as fugitive, impalpable, wayward, and as vague a phantom as exists in the whole paraphernalia of legal concepts.".
A patent is the right to exclude others from making, using, or selling an invention for a limited time. The government gives the inventor certain rights. In exchange, the inventor must reveal detailed information about the invention. Patent law requires that the patient describe the item in detail and include how the technology being patented will be used. In fact, enough information must be revealed to allow another to replicate it. In the early days of the PTO, working models of inventions were required.
A patent is a property right for 20 years under GATT. It was formerly 17 years in the U.S.
The application process can take several years and is expensive. Both the PTO and most of the literature strongly suggest that a patent attorney be used to handle the application process.
The most common patent type is the utility patent. To qualify for a utility patent, an invention must be one of these:
Utility patents require the invention to be useful (function according to its purpose), novel, and not obvious to one who is familiar with the technology in the field. Interestingly, a design patent must be novel, may be not obvious, and may be non-functional.
Plant patents, the least popular type, must be novel and not
obvious. Yet, the process does not always work. For example,
RiceTec patented basmati rice which has been grown in India for
thousands of years. Many plant patents based upon plants grown
abroad are controversial because the lack novelty.
Novelty is the essential variable. It means that the invention is different from anything known before, i.e. there is no prior art or evidence that a similar invention has been described in a published document or publicly used more than one year before the application is filed. "Not obvious" is also important and may involve a more subjective decision by the examiner.
By definition, an invention must be reducible to practice. An idea cannot be patented because it is not an invention. Some inventions that cannot be patented:
There is some controversy about patents issued for computer software as an application of a formula. There is also considerable controversy about patents on forms of life. Utility patents are being issued for genetically altered forms of life, and applications used to discover life ingredients. Many are not pleased by this development
The process usually takes one to two years. Unlike copyright or common law trademarks, there is no automatic patent protection. A patent application must be filed:
There are five stages in the life of an invention:
The U.S. is one of only two countries with a first to invent
rather than a first to file system used nearly everywhere else. This creates the possibility
of the "submarine" patent or "strategic filing" which uses first to invent to deny
earlier filed patents. The U.S. holds patents secret until they
are accepted. Most other countries publish patents 18 months
before examination to allow comment on originality [U.S. has
announced that they will do this in late 2004]. In 1836, a fire
destroyed a large number of patent records issued between 1790
and 1836 so these have been lost.
In 1836, U.S. patents began to be numbered. About 10,000 patents were issued before then (neither numbered nor published). Between 1836-1871, lists of patents issued appeared in the Annual Reports of the Commissioner of Patents. From 1849, abstracts were included. In 1842, design patents were allowed with the first design patent for printing types. In 1872, the first issue of the Official Gazette of the United States Patent Office (POG) appeared. In 1930, plants became patentable. The first plant patent was for an ever blooming climbing rose. In 1980, the Supreme Court ruled that living micro-organisms could be patented. The first such patent was for a transgenic mouse. In 1981, the Supreme Court ruled that computer related inventions may be patented. This decision has resulted in much controversy since, especially re: prior art.
The number of patents continues to grow at about five percent per year or about 200,000 patents in a typical recent year.
The PTO is entirely user fee-funded and operates on a cost
recovery model. The fees pay for about 2,000 patent examiners,
data base creation and maintenance, and related procedures. Until
recently, the PTO had a notable backlog (two years) and that may
well be a result of funding. Congress has poached some PTO
fee-based funding to use for other purposes.
Examiners search prior patents and appropriate literature to see if the application is novel, useful and inventive. Each examiner is supposed to be a subject specialist, but many have only a BS degree. Examiners work in groups focused on particular technical areas under the direction of a supervising examiner. Examiners work under a quota system and that my have negative effects. Of the applications received each year, more than half receive patents. The knowledge and experience of examiners has received considerable criticism in recent years, especially in regard to software patents.
While patent fees have been increased [basic fee = $1,000], the
income received is not dedicated to the PTO and part of it is diverted
and used elsewhere. Thus, there is a shortage of qualified examiners
and a substantial backlog of patents awaiting examination.
This court combines the appellate division of the former U.S. Court of Claims with the U.S. Court of Customs and Patent Appeals to hear all patent appeals from district courts as well as from administrative rulings of the PTO. If your request for a patent is denied, this is where you file your appeal. Lexis, especially BNA's Patent, Trademark and Copyright Law Daily is useful for keeping up with cases before the Board of Patent Appeals and Interferences, and the Court of Appeals for the Federal Circuit
Part of the skill of a patent attorney is the ability to write the patent application so as to achieve maximum allowable obfuscation in order to make it difficult for competitors to design around the patent.
Computerized databases were originally created for the chemical patent literature in the mid 1960s. After 1970, as part of the printing process for sharing patent information, patents were digitized. Before, they were only available in paper or micro-format. Today, U.S. patents via the PTO are available in an image format which is not word searchable. However, much of the patent processing is still done manually.
The PTO began its own Automated Patent System (APS) in 1980 to
replace paper patent files and provide digital search and
retrieval for patent examiners. There were a variety of glitches,
but the data base has improved and become more comprehensive over
the years. Originally available only in the PTO public search
room in Arlington, this database is now available via the
web.
The PTO has digitized past patent documents and is in the
process of destroying the original paper copies [NARA will save
paper copies but these will not be available to patent
searchers]. This is controversial and was not received well by
some patent searchers.
For some time, the information industry has attempted to prevent the PTO from providing free public access to patent and trademark information. Why pay for access to a patent data base if the PTO offers most of the same information without a fee? Value added services would seem to be the answer. The PTO argues that its data base is suitable only for preliminary searching for those otherwise without access to this information. At least in the beginning, the publicly accessible PTO data base would not include the drawings, but only the abstract and the patent title.
Since the PTO has no regional offices, the PDLs perform this function. Here is the WWW site for the Patent and Trademark Depository Library Program. In 1871, the first ten libraries were established. Detroit Public Library was one. There are about 75 patent deposit libraries with each having complete patent specification collections organized in patent number sequence. The PTDL must promise to purchase a back file of 20 years of patents, allow public access, and pay a fee of $50.00 per year. The library then receives copies of new patents on CD-ROM disks (three or four CDs per week), subscription to the Official Gazette, CASSIS software, and other PTO publications. There is a core collection of reference materials and tools provided to each library. PDL staff will not perform searches for users, but they do offer search assistance. Searches are free for public use on a walk-in basis. Patent records may also be supplied via ILL, but the cost varies and it can be expensive.
In Tennessee, Vanderbilt (as is Memphis Public Library) is a PDL but its collection is not nearly as complete
as NC State which has a much older and more comprehensive
collection. As you might expect, the most comprehensive
collection is the Search Room at the PTO in Arlington, VA. About
80 percent of the PDL users are one time users, mostly individual
inventors {the little guy}. Given availability of PTO resources on
their website, there is some question about the life of the
PTDLs.
Patent reference involves extensive interaction between staff and the patron. Users vary in their skill and experience. Some seek technological solutions to some problem. Others want to find product information or keep current with the competition. A few are interested in historical information for its own sake. Inventors are primarily interested in seeing if their work is truly original or if someone has already done something similar.
Many users are inventors near the end of their development
cycle. Most are not familiar with libraries and may have
unrealistic expectations. In particular, they may not realize it
is almost impossible to complete a genuinely comprehensive search
without unreasonable time and effort. Other users might include
historians and those interested in family history.
Since inventors seeking patents need to be able to claim that there is no prior art, it is also important for them to search the specialized periodical literature as well as dissertations.
The reference staff cannot provide legal or technical advice on patents or their validity. They can help with source selection and search strategy.
What should we do? Basic Facts About Patents is useful and should be available in multiple copies. Provide a small desk reference collection of the better how to do it patent books [they should be current and aimed at end users]. Create and/or make available general patent searching guides and tips. Provide links to tutorials and guides available via the web. While we cannot recommend particular intellectual property lawyers, we need to be able to suggest how to identify, and perhaps evaluate, likely candidates.
What should we not do? We do not
provide legal advice. We do not recommend particular patent
lawyers or agents. We do not categorize, analyze, or classify the
potential invention. We do not comment on whether an invention is
likely to be patentable. We do not interpret search results. We
do not suggest that a search or a database is likely to be
comprehensive. In most cases, we will not conduct a patent search
because of the time, effort, and legal liability issues. Patent
searching is an art that requires much experience and time to be
truly effective. Few librarians will be able to develop the
necessary skills. Much of the needed knowledge relates to the
subject or industry where the invention is located. This
knowledge is needed to develop effective search strategies. An
industry example using an experienced professional patent
searcher involved 35,000 to 100,000 patent families. Eventually,
200 relevant patents were reported to the patent law
firm.
When to refer? Normally, inventors will need legal advice? Often, library staff will suggest that. In Knoxville, there is one local firm under "patent searching" and four under the heading "Attorneys and Agents Registered to Practice" with its alphabetical and geographical arrangement
PATENT (prior art) searching is DIFFICULT and very time-consuming. Preliminary searching may be done by users, but final searching should ordinarily be done by a professional in patent searching, especially if foreign patents are important.
What is generically called patent searching actually covers a
number of very different types of searches by patent number,
inventor's name, assignee name, class/subclass, and keyword.
Given the many problems with nomenclature, searching by class and
sub-class is usually the most productive approach. Patents with
common attributes are called "patent families." They are usually
found in the same class or sub-class. If known, searching
on inventor or assignee name can also work well.
Many inventors want to know if their product is unique, and
then if it is patentable. Others may want to identify all patents
by a particular inventor or owner (including what patents are
owned by a particular company or patents that might be associated
with a particular brand name or trademark). The easiest search
here would be by class and then would be for affirm or assignee
responsible for relevant patents.
Many users are unfamiliar with what can and cannot be patented, and they confuse trademarks and copyright with patents. Hard copy and web guides are essential. There are several excellent guides available on the web so you do not need to create your own.
The Index to the U.S. Patent Classifications (C 21.5/2) provides an alphabetical listing of 65,000 subject headings that refer to specific classes and subclasses. The Index uses common terms and not the highly specialized ones found in other PTO publications. Thus, it is likely more useful for the beginner.
The Manual of Classification (C21.12) contains a detailed numerical listing of all classes, class schedules, subclasses, and class and subclass titles.
Classification Definitions ( C 21 .3/2) is useful for scope definitions of particular classes and subclasses. Search notes are included, including cross references.
Both current and some retrospective patent information may be found in the weekly issues of the Official Gazette of the United States Patent and Trademark Office: Patents {often called POG} which has been issued since 1872 but is now available only in a digital version. It lists 1500 - 2000 patents each week in numerical order. The title, name and address of inventor and assignees, date and number of application, and U.S. and international classifications. The abstracts may be helpful in making novelty claims but NOTE that only an abstract is included and the number of claims, but not the claims themselves. POG does not include all claims and drawings.
The Index of Patents Issued from the United States Patent and Trademark Office is the annual 2 part index of the Gazette. It is easy to use if the invention class and subclass numbers are known. It lists inventor names, patent numbers in order according to class and subclass, includes tables listing the first numbers of each patent type for each year since 1836--helpful if you have a patent number.
The The Manual of Patent Examining Procedure (C 21.15) may be useful for the serious inventor concerned with the process.
Normally, these resources would be used in this order:
List all essential parts of the invention giving particular attention to the claims:
Generate a list of keywords or subject terms related to the invention that can be used to search for prior art. Subject searching can be difficult with patents and the classification scheme, and the classification of patents, is not always helpful. It is usually best to begin subject searching in standard subject data bases to identify current relevant terms. "Prior Art" may also be found in these literature searches.
Use these resources to relate these words/phrases to the patent classification scheme. Some experts suggest that the International Patent Classification (IPC) codes present in all patents are easier to work with.
Search for particular classes in the patent database to get a list of somewhat similar patents.
Check patents in the database.
Retrieve the complete patent, including drawings or images from the patent database or the Official Gazette. Note classification of the most similar items.
Repeat process as needed.
Few inventors or other information seekers would consider a manual search today. CASSIS was the patent database most often used because it was free and found in some depository libraries and all PTDLs. Today, free searches may also be done via the PTO's website. Other, value-added patent databases may be more effective, but they are expensive. Dialog, for example, includes at least 8 patent databases including CLAIMS and Derwent.
Derwent is the major provider of patent information. Derwent World Patents Index (Derwent WPI) [now available via Dialog] is the "most comprehensive database of value-added patent documents, sourced from 40 patent issuing authorities. Access through online hosts enables sophisticated data retrieval via powerful command searches. Other online sources such as Axiom®, Westlaw and Delphion's Intellectual Property Network have user-friendly interfaces suitable for both novice and expert searchers." Derwent Innovations Index database merges patent information from Derwent WPI with patent citation information from Derwent Patents Citation Index®. Derwent Patents Citation® Index covers patent citations from six major patent issuing authorities ( DE, GB, JP, US, WO (PCT)) which can be cross-referenced into Derwent World Patents Index. Individualized or customized products are also available.
Now that the full text patent database is mounted on the PTO website, it is the beginning database of choice for the frugal inventor and most librarians. Full-text coverage begins with 1976. Summary, claims, descriptions and references are included. Drawings and images are not available for all patents. You may also search a patent bibliographic database that contains only front page information. Boolean searches and patent number searches as well as manual searches are available.
PTO has produced CASSIS or the Classification and Search Support System since 1987. It has been available at all PTDLs since 1989 and in some depository libraries. CASSIS is an index to accompany any numerically arranged file of patents but includes other files too. Coverage varies with utility patents since 1966 and other types since 1977. Searchable fields include: patent number, issue year, assignee code, state or country, status, and title or abstract. The data base is updated every two months. Effective use requires some knowledge of the patent system. Users may wish to begin with CASSIS if there is a PTDL nearby and then finish with the commercial databases.
Encourage users to evaluate results early rather than printing out many records. After reading the abstract for a likely item in the Gazette or other source, the full patent may be ordered from the PTO or vendor if it is not already available via the data base. Vendors cost more but provide next day delivery. Most commercial vendors have little interest in pre-1950 patents. The PTO provides magnetic tapes to vendors for value added products. Vendors vigorously oppose the PTO making patents available via its own digital product or on the web. In the past, the PTO has opposed individuals and firms who wanted to place patent information on the web for free public access.
For something different, visit Pretty Strange Patents.
For those wishing to use fee-based on-line data bases, the Claims family of files on Dialog can be most useful. The Claims Citation links patents to earlier ones cited. Claims Reassignment and Reexaminations Reference is a dictionary index to the subject classification. Claims U.S. Patent Abstracts also include equivalent patents from Western Europe. Claims U.S. Patent Abstracts Weekly is the most current. Claims Uniterm is for chemical patents.
The Derwent World Patent Index on Dialog is also well regarded, and reasonably user friendly.
Lexis has a Patent Law Library with many separate files on patents, patent classification, and patent law periodicals. BNA's Patent, Trademark and Copyright Journal from 1982 (PTCJNL) and the Law Daily from 1990 - (BNAPTD) are also useful for patent work.The average American may see or hear more than 1500 trademarks each day. Whether we are immediately aware of them or not, trademarks have considerable impact on our way of life. The purpose of the registered trademark is to protect the consumer from fraud based on a too similar trademark, i.e. the IBN personal computer.
In FY 2005, the USPTO registered 143,396 trademarks and renewed
32,279 registrations. More than three million trademarks have been
registered since the first in 1870. At the end of this fiscal year,
there were 1,255,570 active trademark registrations.
Trademark: Legal Care For Your Business and Product
Name by Elias and McGrath (Nolo Press, 5th edition) is
an excellent introduction.
Trademarks in the Digital Age by
Timothy L. Wherry [T223.V2 W442004] is current and
helpful.
The International Trademark Association. Note the trademark checklist to assist authors.
Trade name is used as the formal name of the business on checks, letterhead or other business documents. The trade name is a proper noun and stands alone. Trade names are registered as part of incorporation papers, usually in a state with the secretary of state.
Trademark is a distinctive mark used by the business to market products or services. The mark promises quality. Any word or words, symbol, device or even smell, or combination of these may be used to identify goods and distinguish them from others . There are many possibilities. For example, Harley Davidson has trade marked the sound of its motorcycle.
Brand name is another name for trade or service mark. A trademark is a proper adjective. It should be capitalized, and should be followed by generic term, i.e. Kodak cameras or PAMPERS diapers. Since a trademark is not a noun it can not be used in the plural form. Trademarks cannot legally or properly be used as verbs (you cannot say "Xerox that report") without risking infringement.
Service mark is the same as a trademark except that it protects marks associated with services and events.
A certification mark is used by an organization to vouch for products/services, the Good Housekeeping Seal is an example.
A Collective mark is used by members of a group or organization to identify products/services provided by the members.
Trade dress is the distinctive packaging or identifying features associated with a mark. Can you think of a good example?
Copyright does not protect names, titles, or short phrases. Trademark law protects distinctive words, phrases, logos, symbols, slogans, and other devices to identify and distinguish products/services in the marketplace. Copyright could be used to protect the artistic aspects of an image used to identify a product or service while the trademark protects its business use.
Copyright exists only at the Federal level, is relatively inexpensive, and the process is relatively quick. A trademark is more expensive (but not as expensive as a patent), and takes longer (the evaluation process is more rigorous). Trademarks may be registered at the state or federal level. Like copyright, registration is not required for legal protection. Unlike copyright, trademarks can last forever.
Trademark notice:
Trade marks can be registered in foreign countries, for the U.S., or for a state. Federal registration costs more and the product most cross state lines to qualify.
A trademark gives legal protection, signifying ownership and all commercial and legal benefits of ownership. The trademark is based on the law of fraud and deceit. It is designed to prevent one business from stealing the goodwill or reputation of another. Trademarks should protect consumers by insuring that buyers will not be mislead when they make a purchase. For example, a new fruit drink names B8 would likely be misleading and confuse customers.
The trademark can last forever IF it continues to be used. Registration is for 10 years, but may be renewed. The R in circle means that the PTO has accepted the mark and it will stand if no legal challenge within 30 days.
A trademark is infringed when another uses a mark so similar to an existing mark in the same product category that buyers are likely to be confused, thinking that the first product is issued by the same firm as the second. For example, Lexis (of LexisNexis) sued Toyota for using the name Lexus for a new line of automobiles. Because the product lines were so different, no infringement took place. The litigator must prove that the imitation is being used on competing goods/services, is used in the same part of the country or is being used on related goods, is likely to confuse consumers or that their mark will be diluted (reputation for quality tarnished) by its association with another's products and services. The trademark holder must prove that the mark has been in use and that the mark is distinctive and recognized by consumers. If successful, trademark infringement suits may result in cease and desist as well as monetary damages. In general, courts favor the business that first used the mark.
With the advent of the web, many people used registered or common law trademarks as web domain names without permission of the trademark holder. Gradually, Federal courts are ruling that web domain names may not infringe trademarks.
To protect a trademark and keep it out of the public domain (from becoming a generic name), the owner must protect it legally. For example, Xerox will not allow its name to be used as synonym for photo duplication and its attorneys send out many desist letters. If not protected, trade marks are lost or become generic (fall into the public domain). This has happened with:
You cannot trademark commonly-used or generic words or most adjectives. Words such as accurate, fast, and reliable are available to all. The best (offers the most legal protection) names, and logos are distinctive:
The poorest word/phrase choices offer the least legal protection) by using common, ordinary words:
The trademark owner creates common law rights by using the trademark and establishing prior use. Registration is not required, but provides better legal protection. Common law marks are likely to be recognized only within a limited geographic area. The widespread use of the Internet creates problems for local trademarks since a unique local mark may be used elsewhere and that creates the opportunity for marketplace confusion and litigation.
The physical look of the mark is sometimes called the trade dress aspect. Categories include: (1) design only (difficult to search for nonverbal attributes although image searching is rapidly developing) and (2) text and design. This category includes components such as stylized letters, block letters, and word only. Although less likely, additional categories might include sound or smell of an item.
Besides the obvious business user, social scientists can find
much useful information on popular culture in trademark
databases.
As with patents, the amateur should only do preliminary searches because of the legal consequences of an incomplete search if considering using a trademark in business. Searching on words or phrases is not difficult, but searching on images or descriptions of images is difficult. Because trademarks often use unusual words or spellings, phonetic searches are often necessary. Some commercial databases do this automatically. The searcher must also be able to deal with corrupted spelling such as "quik" and run-on words such as goodbuy, as well as sound-alikes, puns, coined terms, and fanciful names. Most trademark databases do not include a picture of the design so searching is limited to searching based on design codes.
Professional searchers may be found under "Trademark Consultants" in a larger metropolitan area phone book. Another possibility would be to have a search done by a research library data base searcher. Few are likely to specialize in trademark searches, however.
The user must decide whether or not to visit a Patent and
Trademark Depository Library. They offer free searches (but the
user must do it). They hold hard cover directories of federally
registered marks and an online database of registered and pending
marks. These libraries also have helpful "how to do it"
materials. With the advent of web access to the materials in the
PTDL, few will select this option unless the library is
nearby.
The US PTO's TESS [Trademark Electronic Search System], is a free trademark database. While the free database is not as easily used and lacks some value added features, it is quick and represents a good starting point. TESS works well and allows three search options: simple form search, free form search, and a structured option. TESS does not include state, foreign, or common law marks which is a problem in the Internet world. Other useful PTO documents available on their website include:
Other useful information is also available at this site, including the Trademark Manual of Examining Procedure. The database includes pending trademark applications (at least two months after filing). The database is supposed to be updated every two months.
Thompson and Thompson, creators of the TrademarkScan databases (the leading, most complete, and most used trademark databases) offer online trademark searching via their SAEGIS WWW site. Thompson & and Thompson have been in the trademark business since 1913 so they have considerable experience. Searches of U.S., state, and 13 European trademark databases are available. The U.S. Full Availability Search covers U.S. federal, state, and common law trademarks. Site Comber checks websites for common law use of trade names. You are also able to do a worldwide domain name search to see if your proposed trade name is being used as a domain name. Searching is relatively easy and the results are excellent. Fees seem reasonable, especially for the accomplished searcher. Also available via Dialog.
Dialog includes several relevant databases including, Trade Names World Wide database [226], TrademarkScan for federal trademarks, with names and addresses of owners, description of the mark and registration date [226]. This was a major breakthrough when first available in 1983. It does include images if you use DialogLink. Dialog also provides World-wide Trademarks [671] and Trademarkscan for states [246].
Lexis has a Trademark and Unfair Competition Library as well as a Patent and Trademark Office Library
Common law trademarks (brand names) require searching the usual business databases. Gales's Brands and Their Companies [Dialog116] is often useful. Thomas Register Online [535] or on the web is also useful
Unregistered trademarks may be searched on the web using the usual search engines. You should also use this method to see if the proposed mark is already being used as a domain name by searching variants of the name plus .com.
Contact the Secretary of State's Office in your state for the state process. The state process is the only option for those who do not qualify for Federal registration. The state registration is also cheaper and much quicker.
In order to qualify, the intent must be to place the mark in commerce "that Congress may regulate."
The state bar association should be able to provide a list of intellectual property lawyers including those who do trademark work. Either you or your lawyer will search to see that your mark is original. If so, an intent-to-use application will be filed with the PTO. The form must be accompanied by a drawing of your mark and samples of how the mark is being used plus the fee. When the examiner reviews the application, he will ask:
After the PTO examines the application and approves it, the application is published in the Gazette. There is a 30 day period for public comment and opposition. If there is no opposition, the PTO issues a Notice of Allowance good for six months, and renewable for up to 3 years. Typically, the process will normally take about one year. Next, a statement must be filed with evidence of use of the mark in interstate commerce, how it is used, etc. plus specimens that show use of the mark. Between years five and six of the initial ten year registration, file a Declaration of Use Statement. Renew your registration every ten years.
Abroad, trademarks must be registered country by country. Most countries do not require use before registration and favor the first to file.
Basic Facts about Trademarks includes list of PDTLs and blank forms.
Trademark: How to Name a Business and Product . This
and other Nolo Press books are excellent.
The Index of Trademarks (C 21.5/3) is issued annually. It is an alphabetical list of trademark registrants, with registration number, date registered, and classification number.
The Official Gazette: Trademarks C21.5/4) or TMOG is issued weekly. It contains a classified list of registered marks, final decisions by the Trial and Appeal Board, and an index of registrants, registrations renewed and canceled. TESS now includes a search line for TMOG so that you can search for all marks appearing in a particular issue.
The PTO suggests these steps:
