This is the fifth in a series of introductory articles on the topic of trademark law. To view the fourth in the series, please click on the Previous Page link below.
In our last article, we covered preliminary trademark searches as a relatively inexpensive first step to obtain clearance of a proposed trademark. If the new trademark passes the initial screening, trademark counsel will often recommend obtaining a more comprehensive search report from a commercial trademark search firm. The scope of the full trademark search report will depend upon the company’s proposed uses of the mark (e.g., state corporation records should be included if the proposed mark will also be used as a company name and/or trade name). In addition to a more in-depth review of the Federal Register, a comprehensive U.S. search report usually includes records from state trademark databases, thousands of common law sources, Internet content, and domain name registration records. The report provides the basis for trademark counsel to evaluate the level of risk associated with the use and registration of the company’s proposed mark.
When the company plans to use the proposed mark outside of the United States, there are a variety of online preliminary screening search and comprehensive search options available. The involvement of local counsel from the relevant countries may be recommended to help ensure that the mark is properly cleared for use and registration in accordance with the local trademark laws. Interestingly, in "first to file" countries, superior trademark rights generally vest in the party who first files an application for trademark registration as opposed to the party who first uses the trademark.
In the next installment in this series, we will discuss the basics of proper trademark and service mark usage in the United States.
This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.
JORDEN BURT LLP is a law firm with a unique focus on financial services and a national reputation in high stakes litigation, financial regulation and product counseling.
