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Domain Name Vs. Trademark, Part II

What do you look for when you search the federal database of registered trademarks to make sure your name does not infringe on an existing trademark? The answer is not as easy as we would like it to be.

In my previous post I urged you to always check (at least) the US Patent and Trademark Office registered trademark database in addition to doing a domain name search before you invest anything in marketing the new name of your company or product. Doing a search of domain names alone may not turn up a registered  trademark, and your chosen domain name may infringe on the registered trademark of someone else. But what do you look for when you search for trademarks?

Recall my analogy of trademarks to recorded deeds. When you want to know who owns real property in a given county in the US, you simply go to the county records office and search through the recorded deeds. Would that it were that simple when searching for trademarks! Unfortunately there are several complicating factors in trademark registration.

First, trademark law is fragmented because trademarks can be registered not only at the federal level, but also by each state. So to be absolutely sure your chosen name does not infringe a trademark registered only in Iowa, you need to search the Iowa trademark registration office. And that means you should search the databases for each state.

Second, the States also recognize “common law” trademarks, which means someone can own a trademark within a state merely by being the first to use the name in a specific jurisdiction, even if they don’t register the name. If Kwarx Auto Body has been operating successfully for years in Dubuque, it would be unfair to let someone else open Kwarx Auto Body II in Dubuque without permission from the original Kwarx. (Something like this actually happened in the 1960s when the national Burger King chain started opening restaurants in Illinois, where an older local restaurant, also called Burger King, was already operating. The courts gave exclusive rights to the local restaurant in a small portion of Illinois around Matoon.) While this makes sense, it also compounds the difficulty for someone who wants to open a national chain of auto body shops called Kwarx. The would-be national chain must search through a lot more databases than merely the US Trademark Office and each state trademark office.

Third, the whole idea of having trademarks in the first place is to avoid consumer confusion over the source of goods and services. Clearly there could be confusion over who owns what store if a national chain of auto body shops called Kwarx invades the territory where a local Kwarx Auto Body resides. But would there be such confusion if Kwarx Auto Body and Kwarx Konsulting both operated nationally or even in the same town? Of course not, because they offer different types of goods and services. Consumers would not expect a consulting firm to also do auto body work. So when the owners of Kwarx Konsulting search the federal database, they can limit their search to specific classes of goods and services like the ones they themselves offer. All goods and services are divided into 45 international classes, so Kwarx Konsulting must first determine exactly what class their own goods and services fall into, then they can limit their search jus to those classes. (By the way, the services of an attorney fall into class 45, as does “escort services.” I draw no conclusions.)

Fourth, you cannot get a trademark on words that sound like an already registered trademark. You cannot get a federal trademark on Kwarx Konsulting if someone has already registered Quarks Consulting. So to be really complete, your search needs to be expansive enough to cover phonetic equivalents of your proposed mark.

Suddenly searching for competing marks may sound like a lot of work, but there is good news. First, searches for word marks throughout the federal and State databases are not very expensive even if you hire someone else to do them, and you can even save that cost by doing the searches yourself. To search of the federal database for free, go to http://www.uspto.gov/trademarks/index.jsp and click on TESS (Trademark Electronic Search System). To find all the State registration offices, start at http://www.uspto.gov/trademarks/process/State_Trademark_Links.jsp for links to each State. Common law search are much more complicated and involve more than just searching for the availability of the domain name. If you want to do a common law search you really should consult a trademark search firm.

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