What's in a Comprehensive Common-Law Search?

As part of a comprehensive name research, Common-Law sources should be checked. What makes a Common-Law search comprehensive?

Here is a listing of SOME of the databases TradeMark Express checks in conducting a Common-Law search:

* Over 16 million trade names are searched - yellow pages, corporations, DBA fictitious name filings, company directories, newspapers, trade journals, court records, tax records, municipal records, credit records, product databases, industry sources, etc.

* Dun & Bradstreet -- Dun's Market Indicators consist of over 11 million Dun & Bradstreet Enhanced DMI records, plus over 16 million US records from D&B's vast data warehouse. With over 98% of the records being private companies, DMI is widely recognized as the premier source for hard to find, basic company information.

* Company and product information databases--including American Business Information, US Business Directory Company Intelligence, Database America All Business File and dozens of other company and product directories.

* Public Records--DBA - Doing Business As, or fictitious business names, filings for 47 states; corporation filings for 49 states. Prompt, MARS and other Full text News Sources--Hundreds of major newspapers, newsletters, business and industry-specific journals, periodicals, abstracts and reviews.

* Industry-Specific Sources--Specialized databases are researched for names in the following industries: entertainment, communications, computers, publishing, medicine, pharmaceuticals, electronics, technology and sports.

To see a complete listing, check out the PDF document here.

A search of the internet and domain names should also be conducted. TradeMark Express recommends that every client take advantage of the FREE resources out there to conduct this part of the search. In conducting our Common-Law search, we feel it important to spend our time and money on researching databases not freely available to the public.

Recommended sites:

Google
Yahoo
NameBoy
WHOIS

What's the Point of Getting a Federal Trademark?

After reading about Common-Law, you're probably wondering why you'd even be interested in getting a Federal Trademark for your name. Well, let's break down the key reasons as provided by the USPTO.

1) Constructive notice nationwide of the trademark owner's claim

Essentially, this means that no other party will have the right to use the same or confusingly similar name throughout the US. It also means you can use the ® symbol.

2) Evidence of ownership of the trademark

The records of the USPTO are public and therefore, it'll be obvious you own the Federal trademark.

3) Jurisdiction of federal courts may be invoked

Should another party infringe on your Federal trademark rights, you'll be able to use the Federal court system.

4) Registration can be used as a basis for obtaining registration in foreign countries

If you do want to extend outside of the US, you'll be able to use your US Federal trademark registration as a claim for priority.

5) Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods

You'll be able to record your Federal trademark with U.S. Customs & Border Protection to prevent the importation of goods that infringe upon your mark. Read more here.

All of the above advantages are yours once you obtain a Federal trademark. However, all of the above can only be yours once you know that the mark is truly available AND the application has been completed correctly.

What Is Common-Law?

Most often when one hears the term Common-Law, it's in reference to marriage. If that's what you're looking for, go here. Otherwise, keep on reading.

First, let's start with the USPTO's definition:

"Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

The above sentence really needs a caveat added to it: Yes, you can be 'first in line' if you file an Intent to Use trademark application PROVIDED that there are no other parties that can claim prior Trademark or Common-Law usage.

Also, Common-Law rights are restricted to the geographic area in which the mark is used.

Let's look at an example to illustrate this point:

In 2003, you started a web design company called Golden Fog Design & are based in the Bay Area of California. Your clientèle has been residents of the Bay Area strictly. This is where your Common-Law rights extend to, even if your web site that advertises your services is viewed worldwide.

Yesterday, a company called GoldenFog launched their web site advertising their web design services. They are based out of New York, NY and have been in business with that name since 2005. The company also filed for an Intent to Use trademark application with the US Patent & Trademark Office.

How does this work out? Now, of course, each situation varies from the next & I'm using rather crude examples to illustrate a point. So yadda yadda yadda, if this is happening to you, seek advice.

That being said, here's how it'd typically work out:

You'd still have your Common-Law rights to the Bay Area of California since you've been in business the longest. The NY company would have Common-Law rights to their city since they've been using it longest there. Now, the USPTO would also likely grant them the trademark since the USPTO will be blissfully unaware of your usage of the mark, UNLESS you contest the application.

However, even contesting it does not necessarily negate the Federal trademark. You may able to restrict the NY based company's Federal trademark registration from advertising & servicing the Bay Area of California.

Again, if you find yourself in this boat, contact a trademark specialist or a trademark attorney. Each situation is specific & the details will need to be hashed out.

Read more about Common-Law here.