Resources for Searching Common Law Trademarks

Article excerpt

An important asset for most businesses is customer recognition of their products and services. By carefully selecting and managing trade names, product names, logos, slogans, and images, companies try to create an association between a product or service and intangible characteristics, such as excitement, respect, fun, or reliability. To create such associations, companies use trademarks. A trademark is any device that identifies the source of a specific product or service.

Service marks, certification marks, collective marks, and collective membership marks are used in the same way. Service marks indicate services, such as entertainment services or restaurant services. Certification marks show that the owner of the mark recognizes a product or service as having specific characteristics. For example, "The Florida Sunshine Tree" certifies that the goods bearing the mark either consist of citrus fruit grown in the state of Florida, under specified standards, or are processed or manufactured from or with such citrus fruit.(2) Another certification mark, "Underwriters Laboratories, Inc.," certifies that representative samplings of certain types of goods conform to the requirements used by Underwriters Laboratories, Inc., for safety testing.(3) A trade association can authorize its members to use a collective mark for certain types of goods or services. The "California Association of Flower Growers-Shippers" mark belongs to a floral industry association of the same name.(4) "Boy Scouts of America," on the other hand, is a collective membership mark that indicates membership in an organization.(5) For the sake of this discussion, all types of marks will be referred to as trademarks.

While all four of the trademarks mentioned above are registered with the U.S. Patent and Trademark Office, many trademarks are not. A prerequisite for federal registration is that the owner must use the trademark, or intend to use it, in interstate or international commerce. Otherwise, the trademark cannot be registered with the PTO. Another option available to businesses is registration at the state level. All fifty states have provisions for registering trademarks, corporation names, assumed business names, or all three. However, the provisions vary from state to state. The trademark owner may elect not to register the trademark at all. Federal law and the laws of some states provide some protection for such marks, known as common law trademarks. Protection for registered trademarks is generally regarded as much better than common law trademarks, but many businesses find reasons not to register, nonetheless.

Library patrons sometimes need to search trademarks. Some want to contact the business that owns a particular mark. Others want to establish a new trademark and need to determine whether a potential trademark is already in use by another business. They might conduct a preliminary search to screen their choices and make adjustments to a potential trademark before attempting to register it. This column will focus on the specific needs of searchers who want to do preliminary screenings.

State and federal laws define what is and what is not a trademark, and therefore have an effect on searching. However, nothing here should be construed as legal advice to libraries or library patrons. When specific legal rights are at stake, affected persons should consult with a legal professional rather than an information professional.

Special Consideration for Searching

Trademarks serve a special purpose. Trademark screening requires much more consideration than simple searches for exact matches. For businesses, the trademark itself is important, but it is really secondary to the customer recognition it generates for products and services. If two businesses use similar marks that confuse their customers as to the sources of products or services, then the trademarks create problems, not recognition. The trademarks do not have to be identical for this problem to arise. …