Trademark searches

[SpongyBob]

Hi,

So basically I want to do an extensive online trademark search of a fairly brandable "word" (it's a short letter .com I own - it's not an actual word, it just sounds good, if you know what I mean). I already know it's fairly brandable because someone's already registered a US trademark of it - but luckily for me they registered it after I bought the domain.

What I want to do is make sure I've got all my bases covered before I consider selling it, and make sure there isn't some earlier trademark lurking in who knows where.

So is there any resource out there that can search all/almost all the trademark databases in the world?

Or am I going to have to do this the painful way and try and find every online trademark database for every country? If so, anyone know a resource with links to all the online trademark databases available?

Thanks for any help.

 

[aramyus]

Here are some links for TM searches

trademarkia.com

tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:utehyx.1.1

uspto.gov/trademarks/index.jsp

icimarques.com/

For US
tess2.uspto.gov/bin/gate.exe?f=tess&state=4802:q0w321.1.1

For UK
gov.uk/search-for-trademark

For Canada
ic.gc.ca/app/opic-cipo/trdmrks/srch/bscSrch.do?lang=eng

 

[platey]

Google being the master of search engines should create a global trademark search engine that contains all trademarks globally whereby a person simply types in their domain name in to such a search engine and all or any trademarks globally relating to that domain or infringed by that domain instantly appear in about er 1 second
- but that's too easy

 

[Zameer24x7]

Global Trademark Database.

http://www.wipo.int/branddb/en/

 

[jberryhill]

Why not use Google to find out whether other companies are using the term as a trademark?

The fascination that domainers have with trademark databases continues to mystify me.

If someone is making prominent and exclusive use of a term as a trademark, then you can figure that out by using a plain old Google search.

 

[aramyus]

Why not use Google to find out whether other companies are using the term as a trademark?

The fascination that domainers have with trademark databases continues to mystify me.

If someone is making prominent and exclusive use of a term as a trademark, then you can figure that out by using a plain old Google search.

Could you explicit your method ?

I am not too sure how it is today, but a few years ago there were zillions of fan pages using trademarks. I suppose they all infringed TM, yet were at least tolerated.

Yet, I don't see TM that often in namebio transactions (I admit, this assumption is intuitive as I don't have a TM database to check them)

 

[jberryhill]

Could you explicit your method ?

Sure. A trademark is a word, phrase or symbol which, when applied to the goods or services made or controlled by a particular source, serves as a distinctive indicator of the source of those goods or services in the relevant market.

The question of "is someone using (xxxx) as a trademark" and "does (xxxx) distinguish the goods and services of theirs from others in the market" can often be answered by using Google.

Try this as an example. I'll give you two strings of letters:

"dog"

"biolage"

What does a Google search tell you?

 

[aramyus]

Sure. A trademark is a word, phrase or symbol which, when applied to the goods or services made or controlled by a particular source, serves as a distinctive indicator of the source of those goods or services in the relevant market.

The question of "is someone using (xxxx) as a trademark" and "does (xxxx) distinguish the goods and services of theirs from others in the market" can often be answered by using Google.

Try this as an example. I'll give you two strings of letters:

"dog"

"biolage"

What does a Google search tell you?

Sorry, but I am totally lost.

Let's imagine I look for moderately known trademarks. How can G help find if these are TM or not ?

Personally, in such cases I check the various TM databases.

 

[jberryhill]

How can G help find if these are TM or not ?

When you do a Google search on the word "dog", do the results that you get seem to indicate that "dog" is associated with a particular good or service that comes from one manufacturer?

When you do a Google search on the word "biolage", do the results that you get seem to indicate that "biolage" is associated with a particular good or service that comes from one manufacturer?

 

[equity78]

Why not use Google to find out whether other companies are using the term as a trademark?

The fascination that domainers have with trademark databases continues to mystify me.

If someone is making prominent and exclusive use of a term as a trademark, then you can figure that out by using a plain old Google search.

John why does it mystify you, it seems to me it makes sense for domainers to educate themselves in this area, are you saying it's not needed ? Google can provide false results could it not ? If you see results of someone ripping off a brand and also using the same name, a novice investor might think, well Google showed me two or three companies using biolage, when one or two might very well be squatters, counterfeiters, etc... You know more on the subject than I, I just don't know why searching TM databases would be discouraged.

Thank you

 

[aramyus]

Thanks @jberryhill
If I understand well, you suggest to simply look at the result page on G to guess if a domain is TM. To me it's as easy to look in a TM database (eventhough their interfaces are often quite mediocre)

 

[SpongyBob]

Thanks for the replies.

 

[SpongyBob]

Global Trademark Database.

www. wipo.int/branddb/en/

That's actually, EXCELLENT. That's every trademark database in the world, covered?

Although it did nearly make me cr*p myself. THREE pages of results for my single "word".

Everything, I-*myword*, e-*myword*, *myword* TV, etc. As well as just the single word. US, australia, Mexico. Telecoms companies, everything.

The good news...most TMs are after 2010, and only half a page pre-my purchase (had it a while), and ALL of them are inactive.

I got the impression it was my "big one" from the mount of decent offers I've had on it, but I've always treated it as a long term investment. Looks better than I thought.

Tempted to try and trademark it myself as added protection. Worth it?

Now, how much can I get away with asking for it...

 

[Kate]

A registered TM is not mandatory to claim TM rights... so indeed you shouldn't limit your search to known TM databases. As said above Google is your friend + a healthy dose of common sense too.

 

[jberryhill]

I just don't know why searching TM databases would be discouraged.

If my remarks were taken as "discouraging", then I should clarify that I often see comments to the effect of "I checked, and there is no trademark" which means "I looked in database of registered marks and didn't find an exact match to some string". A common variant of that thinking is when someone actually knows that a company is using that character string as a mark, but they will conclude it is somehow "not a trademark" by looking in registration databases. My point was to encourage a broader view and to discourage the notion that trademark registration databases are somehow the last word on whether a term is, or is not, a trademark. If you don't find records in trademark registration databases, then have a look at Google to see if someone is using the term as a mark - and yes that requires the application of common sense.

The flip side of this are those who do not appreciate that even registered trademarks come in a variety of flavors. For example, there is frequently no distinction between pending applications, issued registrations, or "supplemental registrations" - all of which show up in the USPTO database as "live" records, and all of which can mean dramatically different things.

 

[equity78]

If my remarks were taken as "discouraging", then I should clarify that I often see comments to the effect of "I checked, and there is no trademark" which means "I looked in database of registered marks and didn't find an exact match to some string". A common variant of that thinking is when someone actually knows that a company is using that character string as a mark, but they will conclude it is somehow "not a trademark" by looking in registration databases. My point was to encourage a broader view and to discourage the notion that trademark registration databases are somehow the last word on whether a term is, or is not, a trademark. If you don't find records in trademark registration databases, then have a look at Google to see if someone is using the term as a mark - and yes that requires the application of common sense.

The flip side of this are those who do not appreciate that even registered trademarks come in a variety of flavors. For example, there is frequently no distinction between pending applications, issued registrations, or "supplemental registrations" - all of which show up in the USPTO database as "live" records, and all of which can mean dramatically different things.

Thanks for the reply John, so basically use both for a fuller picture on trademarks. I agree no one should think the database is the end all be all because an organization can have common law rights correct ?

 

[iAchilles]

tmdn.org/tmview/welcome

Great resource and it covers most regions afaik.

 

[SpongyBob]

Ok,

So I've done a bit of sniffing about with google, as suggested, and yes, there seems to be quite a few other companies using *myname* in various forms without a trademark as well. Bit of minefield, this. It's all grew a bit like topsy after the last time I looked.

I suspect who made me a recent, good, but nothing like what I want, offer, was a new PLC. They're called *myname**something* without giving too much away, and the first result that comes up. *myname* seems to be also their stock ticker name. I suspect they might just change their name to *myname* if they had the domain.

The good news, after finding a story on them, is that they seem to have $30m in cash, after floating on a stock market in 2014. The bad news is, is that they lost $3m last year. So they've got bags of cash, but are burning through it. Unsurprisingly they also have one of the registered trademarks (recent).

So, I've got no idea how much I can get away with asking. Any thoughts?

 

[jberryhill]

They're called *myname**something* without giving too much away, and the first result that comes up. *myname* seems to be also their stock ticker name. I suspect they might just change their name to *myname* if they had the domain.

A company name, or a stock ticker symbol, is not a trademark unless it is used as a trademark.

It's not clear what you mean by "companies using *myname* in various forms without a trademark". They are either using the term as a trademark - i.e. a brand of goods or services - or they aren't. Again, there is no particular "magic" about whether their mark is registered or not. I might or might not have a license for my dog, but whether or not I own a dog does not depend on whether I've registered my dog with the appropriate government agency. If it has four legs, fur, a tail and says "woof" - it's a dog.

But, let's go back to my first sentence. The stock ticker symbol is assigned by the exchange as an identifier of that company's stock. For example, Verisign markets domain registry services under the mark "VERISIGN". They don't use "VRSN", their stock ticker symbol, as a mark for any goods or services.

Company names, or trade names, are identifiers of the company in question. Whether or not a company name functions as a trademark depends on whether the company uses its name as a trademark for its goods or services. For example, I might run "Bigco Inc." and Bigco Inc. sells a popular line of widgets called the "WonderWidget". Consumers recognize these widgets in the market as the "WonderWidget", and not as "the widgets that Bigco Inc. makes". In that situation, "Bigco Inc." is merely a company name or trade name, but it is not a trademark.

Here's an example of that distinction in action:

http://www.adrforum.com/domaindecisions/1684372.htm

In the montezuma.com dispute, there was a company called "Montezuma Welding and Manufacturing Inc." which was incorporated in 1988. For many years, they sold a line of toolboxes which were branded "CPL" toolboxes (the "CPL" was an acronym they came up with for a unique locking mechanism). They did not call them "Montezuma" toolboxes until much later, after the domain name was registered by the Respondent.

After they changed their branding to "Montezuma" on the toolboxes, they came after the domain name, claiming they had been "Montezuma", as a company, for many years.

But that's not the point. The point was when did they start using "Montezuma" as a trademark.

Now, quite frequently, companies use their trade name as a trademark. Apple Computer makes Apple computers.

So, getting back to my point about Google... if you want to find out whether someone is "using the term" in some manner, then Google is a much better way of finding that out than by looking in trademark databases. In fact, trademark registrations can long outlast actual abandonment of a mark. In the US, trademark registrations are renewed at 6 years, and then 10 year intervals. So, you can easily come across a 25 year old US trademark registration which, in actual reality, was abandoned eight years ago through non-use.

But once you have found some kind of "use", then the next question is whether that "use" is as a trademark, a trade name, or something else entirely. It requires engagement of your brain and learning a bit more about what trademarks are and how they work. If this stuff all depended on some kind of mechanical rule - "is it in some database or not" - then what do you think trademark lawyers do all day?

 

[subotic]

I have some doubts about TM's, hope someone can clarify.

Take this situation: a big company uses a general industry term variation as their brand. Let's imagine a window cleaning company uses as a brand 'Clean Windows'. And they have all main gTLD's registered. One day they let one of them expire. It's a valuable domain as it clearly refers to a valuable keyword: CleanWindows.whatever.

Would it be possible to register this domain name, considering this company uses 'Clean Windows' as their brand and they've had all gLTD's registered for the last 3-10 years? Would it be a potential UDRP risk to register the domain they let expire?

If they can claim this valuable domain any time they like I'd consider it somehow like they 'hijacked' the term. They just make it impossible for anyone to use a valuable combination, even though it would be valuable for any company in their industry and it's a general term - a bit like registering say 'self driving car' as a brand and keep anyone else from using this valuable general combination even if you let it expire, you just keep it completely private as long as you want.

Any idea on this?