Why use a professional search firm like GLS?
When performing our most comprehensive trademark searches, we access more than 6500 separate sources of information. Many of these sources are accessed through CD-ROMS or on-line services. Some are trade journals or books in paper form. Much of our research is conducted in U.S. Government libraries which contain important information not available through any other source. To effectively use these resources, hours of training and practice are required. Our staff spends hours each week looking for new sources of trademark information.
Information Is As Current As Possible
The U.S. Patent and Trademark Office (USPTO) makes data available to private vendors who, in turn, produce computer databases containing Federal trademark information. These computer databases are missing information on as many as 60,000 recently-filed trademark applications and hundreds of thousands cancelled or abandoned marks. In addition, numerous errors or omissions have been noted in the older data. For this reason, a truly complete trademark search must include a search of the Official Library of the USPTO. GLS is the only major trademark search firm that routinely searches both a computerized database of Federal trademark records as well as the records of the USPTO Library.
Our staff averages more than 25 years experience in trademark research and has performed thousands of searches. In the subjective world of trademarks this experience can be invaluable. Concepts such as “dilution”, “family of marks”, “related goods and services” and “phonetic similarity” must be understood in order to perform a proper trademark search. Through years of interaction with USPTO Examiners and from our review of thousands of trademark files we have come to understand these sophisticated principles, thereby minimizing the possibility of a later problem.
The resources GLS uses to perform a search and the training required to effectively use them could not be duplicated for less than $2,000,000. However, a comprehensive search is performed for as little as $345.
Trademark searches are usually completed within 48 hours and a verbal report rendered. A 24-hour Rush® and a 4-hour SuperRush® service are also available.
What kind of trademark search should I do?
We are frequently asked to “recommend” which of our many trademark search options is appropriate given certain circumstances. We do not “recommend” search levels. While it is sometimes obvious that a particular search is not relevant to a given situation, more often than not the appropriate level of search is determined by the level of risk one is willing to assume and under what budget constraints the research must be performed. The primary goal of the trademark search is to identify any prior use of a similar name for related goods or services. Generally, this goal is best met through the most thorough search. While the most thorough search can cost in excess of $500, the most frequently requested search is our “Package 2™ with Internet” which costs $345. This search is also most equivalent to the full searches offered by other major trademark search firms.
An important decision regarding the advisability of performing an extensive trademark search was rendered April 14, 1996 by the U.S. Court of Appeals for the Second Circuit in the case of International Star Class Yacht Racing v. Tommy Hilfiger (38 USPQ2d). In this case Hilfiger was found potentially liable for damages because they did not perform a comprehensive search, despite their attorneys’ advice that they should.
The following excerpts from that decision may be helpful when determining what level of search is appropriate in a particular case:
“…Hilfiger’s choice not to perform a full search under these circumstances reminds us of two of the famous trio of monkeys who, by covering their eyes and ears, neither saw nor heard any evil. Such willful ignorance should not provide a means by which Hilfiger can evade its obligations under trademark law.”
“…The district court stated that the trademark search conducted by Hilfiger prior to its use of ISCYRA’s “STAR CLASS” mark was of federal and state marks. In fact, the search was limited solely to registered or applied-for federal trademarks; despite its attorneys’ advice that a wider search be conducted, Hilfiger did not do one until after ISCYRA filed its suit.”
“The district court relied on Hilfiger’s limited first search as proof that Hilfiger did not “engage in a deceptive commercial practice” or otherwise act in bad faith in using ISCYRA’s mark. We are not convinced, however, that such a limited search should exonerate Hilfiger, particularly when Hilfiger ignored the specific advice of its attorneys to search more thoroughly.”
How is GLS different from other search firms?
GLS Differs From Most Other Search Firms In Many Ways:
- GLS is the only major trademark search firm that routinely search computerized databases of Federal trademark records as well as the records of the USPTO Library.
- GLS Corporate Name Search covers all 50 states.
- GLS normal trademark search turnaround is 48 hours with a verbal report rendered by phone. Many firms charge extra for 48 hour turnaround and some take as long as a week to complete a search.
- GLS is in Arlington, Virginia, where consultation with examiners and guidance from other US Patent and Trademark Office officials is available when conducting trademark research.