Academic journal article Reference & User Services Quarterly

Resources for Searching Common Law Trademarks

Academic journal article Reference & User Services Quarterly

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. If two marks are confusingly similar, federal law says that the trademark that came into use first is normally allowed to continue. The other is disallowed.

The extent to which two marks are similar enough to be confusing depends on what the marks are, the strength of the earliest mark in use, and whether the products or services will be marketed to similar consumer groups. When Quality Inns International tried to use the name "McSleep" for a chain of motels, the McDonald's Corporation demanded that Quality Inns International not use the name, because it infringed on the McDonald's family of marks characterized by the use of the "Mc" prefix. Quality Inns International sought a declaratory judgment in federal district court, arguing that the "Mc" prefix was to convey the sense of Scottish attributes of convenience, economy, and quality. However, the court noted that the McDonald's Corporation also asserts these qualities while using the "Mc" prefix. Moreover, marketing of "McSleep" was to be marketed to groups of travelers that were very similar to McDonald's Corporation customers. The court granted McDonald's Corporation an injunction against Quality Inns International to abandon the "McSleep" trademark.(6)

Careful searchers should anticipate the possible ways that consumers could confuse a potential trademark with existing marks. They should consider variations in the forms of words, fanciful spelling, fanciful words, acronyms, synonyms, and other potential bases for confusion. Foreign language words that convey the same meaning as English words also have the potential for generating confusion. The strength of existing trademarks discovered during a search should also be considered. Many people would easily recognize an international business like the McDonald's Corporation, which has developed very strong trademarks. Conversely, few people outside of the medical community are likely to recognize trademarks belonging to a small pharmaceutical equipment company.

Since businesses may choose to register a trademark with the PTO or a state agency, or not register the trademark at all, no single source will enable a searcher to cover all existing trademarks. Since common law trademarks are not registered, a complete search of all existing trademarks, is probably not possible. However, a number of resources are available to searchers that help to greatly reduce the uncertainty. The resources to consider for this purpose include federal and state registrations, trade name dictionaries, general business directories, Web-based business information services, telephone directories, and Internet search engines. Some of these resources will be quite familiar to experienced business librarians.

Trademark Registrations and Databases

USPTO Web Trademark Database. html.

The most logical place to start a trademark search is with federal registrations. The PTO has officially registered trademarks since the 18703. This resource has complete data for all currently active federal registrations, including images, ownership information, status, descriptions of associated goods and services, and dates of first use for each trademark. New information about registrations and pending registrations is added the same day that the PTO releases it to the public. The information is available without charge and is more complete and timely than databases available on CD-ROM in Patent and Trademark Depository Libraries. Some experienced searchers regard this as the single resource to use for a preliminary screening. Some library patrons will want to go further, but they should not overlook federal registrations.

TRADEMARKSCAN - U.S. State. DIALOG Corporation.

State registrations are not as conveniently available as federal registrations, and users must consider a few additional factors. While all fifty states register trademarks, at this moment only about fifteen offer any searchable files on the Internet without charge. The commercial database TRADEMARKSCAN provides registrations from all the states for a fee. Records include ownership information, descriptions of goods and services, status, and dates of first use. Experienced searchers expect to spend around $250 per mark searching TRADEMARKSCAN. This would include carefully considered alternative spellings, word variants, foreign equivalents, and other ways to anticipate confusingly similar trademarks. The cost represents an added level of commitment for the searcher. Occasional trademark searchers might prefer to have an attorney perform this step, after they eliminate obviously conflicting marks with the PTO database and resources for common law trademarks.

Although TRADEMARKSCAN-U.S. State is great for state trademark registrations, it does not offer other business name information. Business names are also registered with state agencies, but not always as trademarks. States also allow businesses to register trade names, assumed names, fictitious names, or "doing business as" names apart from trademark registrations. Unfortunately, no single resource exists for searching these alternatives. Short of contacting agencies in all fifty states, the searcher can compensate, at least partially, by searching readily available business directories. DIALOG Corporation also provides TRADEMARKSCAN databases for twelve countries, the European Communities, and World Intellectual Property Organization trademark records.

Trade Name Dictionaries

Brands and Their Companies. 20th ed. Detroit: Gale Research, 2000. (ISBN 0-7876-3321-6).

This title is part of the Gale Trade Names Dictionary series, resources that have been around for quite some time and fill an important niche among company information resources. These tides are also available through Gale Business Resources Integrated, a Web-based information service described below. Brands and Their Companies lists around 326,000 U.S. brand names alphabetically, with a separate listing of about 68,000 companies. The brand names represented include some companies that are out of business, brands that are no longer in production, and brands now considered generic, such as "Linoleum." The information is compiled from registered federal trademarks, company literature, and trade journals.

Companies and Their Brands, A Gale Trade Names Dictionary. 20th ed. Detroit: Gale Research, 2000. 2 vols. (ISBN 0-7876-3329-1).

This companion to Gale's Brands and Their Companies offers the reverse of that tide. This company directory lists many, but not all, trade names associated with each company. It describes about 40,000 companies and 180,000 trade names. The information is gathered from product directories, buyers' guides, questionnaires sent to manufacturers, and independent research.

International Brands and Their Companies. 5th ed. Detroit: Gale Research, 1998. (ISBN 0-8103-6948-6).

As one might expect, this resource is much like Brands and Their Companies, covering non-U.S. companies and brands. The information is collected from foreign and international product directories and represents twenty-two thousand companies and seventy-five thousand brands.

International Companies and Their Brands, International Manufacturers, Importers, and Distributors, Their Addresses, and Consumer Products. 4th ed. Detroit: Gale Research, 1995. (ISBN 0-8103-6951-6).

The fourth product in this series completes the circle. This company directory lists brand names, like Companies and Their Brands does, and offers data similar to that provided in International Brands and Their Companies, reformatted by company.

General Business and Association Directories

Some corporation names and association names are not trademarks. Businesses often provide products and services under trade names other than the business name. Nonetheless, a significant number of businesses use the corporation name with products and services. Therefore it makes sense to check a potential

trademark against similar corporation names. Resources listed below provide information about existing business names.

America's Corporate Families, 1999. Parsippany, N.J.: Dun & Bradstreet, 1999. (ISBN 1-56203-719-6).

Dun & Bradstreet has a reputation for fine business directories. This resource, also known as the Billion-Dollar Directory, includes companies with two or more business locations in the United States, or controlling interest in one or more subsidiary companies in the U.S. It lists 12,700 parent companies and 75,000 subsidiaries, divisions, and major branches. "Trade style" entries added as cross-references provide a useful feature for trademark research. A trade style is an alternative name used by a company when doing business with other companies.

D&B Million Dollar Directory, America's Leading Public & Private Companies. Bethlehem, Penn.: Dun & Bradstreet, 2000. (ISBN 1-56203-789-7).

This Dun & Bradstreet directory lists 160,000 public and private companies that have headquarters with more than 180 employees, branches with more than 900 employees, or produce more than nine million dollars in sales value. Educational services and government agencies are not included. However, like America's Corporate Families, the D&B Million Dollar Directory includes trade styles as cross-references.

Directory of Corporate Affiliations. Annual. New Providence, N.J.: National Register Publishing Company, 1999.5 vols. (ISBN 0-87217-378-X).

Ownership relationships between businesses can be complex and confusing. This publication shows how large companies relate to one another. It lists U.S.-based companies with revenues more than ten million dollars, and non-U.S.-based companies with revenues more than fifty million dollars. These include 15,275 parent companies; 45,698 U.S. subsidiaries; 57,240 non-U.S, subsidiaries; and 25,988 outside service firms. The information was collected from information supplied by companies, business publications, and annual reports.

Thomas Register of American Manufacturers. 90th ed. New York: Thomas Publishing Company, 2000.33 vols. ISSN 0362-7721.

The Thomas Register is a well-known compilation of information from manufacturers' catalogs, listing specific product lines under 62,500 classifications. In addition to products, it lists 156,000 companies, subsidiaries, and divisions. The special "American Trademark Index" consists of almost six hundred pages. Users can also access the Thomas Register on the Internet without charge, although they will be required to register.

Ward's Business Directory of U.S. Private and Public Companies. Detroit: Gale Research, 2000. ISSN 1048-8707.

Thanks to the operations of the U.S. Securities and Exchange Commission, information about publicly held companies is relatively easy to find. Finding information about private corporations is not so easy. Fortunately, about 90 percent of the 90,000 companies listed in Ward's Business Directory are private companies. The information has been gathered from business publications, government records, questionnaires, and interviews. Data from this resource is also part of Gale Business Resources Interactive, listed below with other Web resources.

Web-based Business Information Services

The following resources are Web-based commercial services available by subscription or under license. Under either access arrangement, users must adhere to provisions detailed in license and subscription agreements.

Academic Universe. Lexis-Nexis, Inc. (authorized subscribers only). Academic Universe provides

Web-mediated access to selected resources available from Lexis-Nexis. Trademark searchers will be particularly interested in "Business News," which provides full-text access to news, magazine and journal articles, and reports. This product is usually licensed to academic institutions.

Associations Unlimited. Annual. Detroit: Gale (authorized subscribers only).

The foundation for the Associations Unlimited database is the well-known and respected Encyclopedia of Associations, which contributes information about more than 154,000 organizations all over the world. Associations Unlimited also provides information on more than 300,000 nonprofit organizations gathered from public information available from the U.S. Internal Revenue Service.

Dow Jones Interactive. Dow Jones & Company, Inc. http://nrstg2s. (authorized subscribers only).

Dow Jones Interactive, a business news and research service, integrates content from top national newspapers, Dow Jones & Reuters newswires, business journals, market research reports, analyst reports, and Web sites.

Gale Business Resources (Integrated). The Gale (authorized subscribers only).

As the name implies, this online service integrates a number of familiar business directories, including Brands and Their Companies, Ward's Business Directory of Private and Public Companies, Encyclopedia of Associations, and several others. It contains listings for 443,000 U.S. and international companies, extensive essays for 1,100 industrial categories, industry statistics, market share reports, and company rankings. In addition, 4,000 company histories and 1,500 company chronologies are available for the most prominent businesses in the world. It is searchable by company name, brand name, location, and industry.

Hoover's Online, the Business Network. Hoover's, Inc.

This information service provides Internet delivery of Hoover's proprietary business and industry information. Some services are only available to members who pay a nominal subscription. While the number of companies is modest in comparison with other services, the list includes private and public companies and subsidiaries, U.S. and non-U.S, companies, and the "Business Boneyard" directory of companies that are no longer in business.

ProQuest Direct. Bell & Howell. (authorized subscribers only).

ProQuest databases store millions of articles originally published in magazines, newspapers, and journals. Full text is available for a large portion of the articles indexed in this service. Many additional articles are represented only by abstract. The ABI/Inform component of ProQuest Direct allows users to search one thousand premier worldwide business periodicals for information on advertising, marketing, economics, human resources, finance, taxation, and information on more than sixty thousand companies.

Telephone Directories

While telephone directories rarely mention brand names that are different from company names, the huge numbers of companies listed in the following resources make them valuable for trademark searching. Users can search these files by category, business name, or location.

BigBook. GTE New Media Services, Inc. BigBook contains listings from all telephone companies regardless of telephone service provider. It lists more than eleven million businesses nationwide, but does not include residential listings.

BigYellow, Your Yellow Pages on the Web. Bell Atlantic Electronic Commercial Ser-vices,

This resource enumerates 17 million listings and thousands of online marketing messages from businesses throughout the United States. It also provides links to yellow page directories around the world.


InfoUSA has published several voluminous business directories in print. This publisher has logically converted much of that information, with updates, to an Internet searchable format. Files include 11 million businesses in the U.S. and Canada, and 115 million consumer households. Data are gathered from multiple sources and verified by telephone. Size of business is of no consequence as everything gets included. InfoUSA provides data to ( and to Yahoo Yellow Pages (

Internet Search Engines

The Internet is such a dynamic environment that it is difficult to determine which search engines and other resources best fulfill a searcher's needs. Trademarks employing common words might suggest a search method that generates a high degree of precision to eliminate all but the most closely matching results. After all, Internet search engines do not limit results to actual brand names and company names. They are likely to identify Web pages that mention search terms in any context.

Trademarks that use fanciful words or spellings of common words might indicate a search engine with higher recall and less precision. In these cases, searchers may want to see everything that bears any resemblance to the candidate mark. The Internet search engines listed here favor higher recall, especially when several are used to search a single trademark.

With all search engines, the trademark searcher would benefit from exploring help pages, tips, and examples, especially when searches involve multiple terms or word form variations.

AltaVista indexes more than 250 million Web pages, which makes it one of the largest and most comprehensive engines available. Indexing is purportedly updated constantly, but old links seem to come up a little more often than they should. AltaVista employs a "Real Name System" that matches search terms against registered Web sites, brand names, and slogans. Results are displayed either as a single, complete list, or categorized as products, news, discussion groups, Web pages, images, MP3/audio, video, and directory information. The categories are accessible through tabs near the top of the results page.


This service indexes 150 million pages and also indexes Usenet news. From the results list users can "Search for more documents like this one," which searches Excite with an algorithm based on the content of the original search result.


HotBot indexes more than 110 million sites, providing an easy-to-use interface. It also provides more timely updates of indexing to minimize bad outdated links.

Northern Light.

Northern Light is one of the newest major search engines on the Web, indexing 189 million items.

Editor's Note: Nationwide interest in trademarks has risen over the last several years as businesses seem to have become more aware of the value of strong trademarks. Changes in federal law enabling companies to register trademarks before they are used have created a more favorable climate for such a venture.(1) Businesses involved in electronic commerce have created many new trademarks for a new field of endeavor. Last year's Internet introduction of a fully searchable database of current and pending federal trademark registrations, complete with images, has brought trademark searching to the fingertips of average business persons and consumers. Confirming this trend, Patent and Trademark Depository Libraries have observed a shift in interest over the last decade from questions almost exclusively about patents, to interest almost evenly divided between patents and trademarks. Furthermore, the U.S. Patent and Trademark Office (PTO) is now processing more trademark registrations than patent applications each year. Not long ago, patent applications outnumbered trademark registrations by about two to one.

This column provides an overview of common business resources that can help searchers conduct preliminary screenings of potential trademarks. Since the PTO's database of current and pending trademark registrations is available without charge on the Internet, most of this discussion addresses issues and resources relevant to searching unregistered, or common law, trademarks. Author Kevin Harwell is a business librarian at Penn State University with more than fourteen years of experience with patents and trademarks. He is also past president of the Patent and Trademark Depository Library Association and the author of several articles about patent services in libraries.


1. Trademark Revision Act of 1988, Public Law 100-667, 102 Stat. 3935 (1986).

2. Principal Register, United States Patent and Trademark Office, Registration No. 932033.

3. Principal Register, United States Patent and Trademark Office, Registration No. 1110289.

4. Principal Register, United States Patent and Trademark Office, Registration No. 2020278.

5. Principal Register, United States Patent and Trademark Office, Registration No. 1363872.

6. Quality Inns International, Inc. v. McDonald's Corporation, 695 E Supp. 198 (D Md. 1988).

Correspondence concerning this column should be addressed to Diane Zabel, Schreyer Library for Business, Pennsylvania State University, University Park, PA 16802; e-mail:

Kevin Harwell is Business Librarian, Pennyslvania State University

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