Embedded Files
Conduct preliminary risk assessment: "descriptive"; "within reasonable risk"; "problematic": http://dilbert.com/strips/comic/2007-04-15/
and deep pockets as possible sources of problems: http://www.mcspotlight.org/media/press/littlepeople.html
-What classes to search?: general-International Classes; classes, and what they do NOT include: International Trademark/Servicemark Classes
- N.B.: run new search to check clearance if filing in a different class; see, e.g., several successful filings by SandBox Logistics, LLC, and special tweak needed for class 25
- Effective January 1, 2018: What classes to search?: Nice Classification, effective Jan. 1, 2018: 11th Ed., and here (with USPTO notes)
-Detailed descriptions of goods and services; Trademark Acceptable Identification of Goods & Services [use 3-digits to search by class: 009; 041; etc.]
- Will client be in for a fight with a "famous" mark? What can make co-existence possible?:
"IKEA can't prevent registration of AKEA", by Laura K. Johnson, Esq., Finnegan Henderson, on Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014):
"…even for “famous” marks, similar trademarks may be allowed to coexist if an opposer fails to demonstrate similarities between the goods and services, channels of trade, and degree of consumer care."
[see precedential TTAB opinion, and posted below]
Dogpile Web Search (Google, Yahoo!)
special: pharma--IP-factors.pdf
Image (design) searches - https://www.makeuseof.com/tag/21-quick-browser-tools-search-images-online/
Open Source: discover, track, compare [https://www.openhub.net/]
other specialized search engines: code search engines: https://www.nerdydata.com/ ;
various specialized search engines: http://www.philb.com/webse.htm
Special social media review:
"One Does Not Simply Post memes without reviewing the IP issues" - see here (or .pdf file, below)
WIPO Global Brand Database and TMView and eSearch Plus [EUIPO] and filings in other jurisdictions
European Union member countries--will mark be used in each of the 27 jurisdictions? Possibly opposed due to use in any of the EU countries?
What is/was use?: USPTO TSDR database and Internet Archive: Wayback Machine
Who has priority? Cert granted by US Supreme Court in 9th Circuit trademark "tacking" case- Hana Financial, Inc. v. Hana Bank & Hana Financial Group, Case No. 13-1211 (Supr. Ct., June 23, 2014);
(Noted by Paul Devinsky, Esq., McDermott Will & Emery)
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What message? How to say it?
Report to the business teams, and requests to counsel - stock-language-for-IP-use.pdf (file attached below); how to use: Trademark Basics
Remember when reporting, you may need to message difficult news, as captured by Scott Adams in his Dilbert strip
Report to supervising attorney - PureText Home Page ; Mac® TextEdit ; NEO - The Microsoft Outlook Email Software Add-On
Request risk assessment from outside counsel - ActiveWords (and see above "stock language" link)
Descriptive fair use ; laudatory marks (both comments by Kathleen A. Rheintgen, Esq.)
No guarantees: "..."refrain from misuse of our client's VIRTUAL WALLET trademark.";
Duke, Hershey, and Winston: who gets to trademark a famous name? (August 5, 2014)- Mark Sableman
and:
"Last year [1994] in Half Moon Bay, San Francisco, McDonald's successfully forced a small cafe, known for 17 years as McCoffee, to change its name. 'This is the moment I surrendered the little 'c' to corporate America,' lamented Elizabeth McCaughey, who, as owner of the coffee shop, had titled it as an adaptation of her surname." (Posted at http://www.mcspotlight.org/media/press/littlepeople.html.)
Special case: titles - "Who's Entitled to Trademark a Title?" (by Paul E. Thomas, Esq.) [.pdf link, below]
Quick reference sources: COPYRIGHT and, at February 2017, call 1-877-476-0778 to reach live person at the US Copyright Office to ask a question.
Updated October 4, 2020
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