When a creative team decides on possible names for a new company or product, the legal team must conduct proper trademark clearance to be sure that the use of that name is not infringing upon the rights of someone else who may already be using the mark. This process can avoid lawsuits down the road. Trademark Counsel first must search every known record for use of the name. Sources include normal databases one may expect but, in addition, hundreds of other sources will be searched that may include nationwide phone records, business filings, sound-a-like databases and many more. Once the searches have been completed the attorney will comb through the results and select the instances that may become a problem if the client were to move forward with using the name. If there are too many potential problems, it may be recommended that the creative team choose another name. If not, the clearance process will begin.
Even though someone else may have used the same name at one time, it is possible that they ceased using it. If this is the case, legal counsel may advise that the name has been abandoned and that it is appropriate for for the creative team to use that mark. If legal counsel does not conduct proper clearance, the company could be sued for infringement. If a trademark investigator does his job properly, the attorney will have the understanding she needs to give the proper guidance. The Holmes Method consists of these five steps:
Who: Determine exactly who the entity is that used the mark. Are they still in business? What is their current contact info? Has the mark been reassigned? Was the entity acquired by another entity?
What: Find out on what materials the mark was used. Is it printed on the product or packaging? On the website? What about on menus, brochures, business cards?
When: The date of first use, or DOFU for us industry folks, is when the mark was used for the very first time. If it was the result of a name change, what was the previous name? Are there business records that show a date? Perhaps cached versions of the subject’s website show earlier use.
When: Is the mark currently in use? If so, you should obtain a sample. If not, what was the date of last use? It could be as simple as finding out when a company name was changed. Usually it is not simple and requires digging and/or contact with the subject.
Where: What is the geographic scope of their use of the mark? Do they use it only in the United States? Only in a particular region or certain states? Worldwide?
How: The use of a trademark for your purposes may be perfectly acceptable if your attorney determines the Goods and Services (or International Class) to not be infringing on the other mark.
Techniques in determining the answers to these five questions are likely going to be different for each investigation. Methods may include social engineering by way of email or telephone, or digging through public records. When taking the case, be sure to ask the client if they have a particular date in mind. Sometimes the potential conflict was discovered while both were in use simultaneously. If this is the situation, there will be a Magic Date on which to focus. Whatever the case, you must put great care into thoroughly investigating these possibilities. This ain’t for the faint of heart. Your client’s entire business is at stake.
Now I’m going to finish my coffee.
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