Genie Tyburski is the Research Librarian for Ballard Spahr Andrews & Ingersoll in Philadelphia, Pennsylvania and the editor of The Virtual Chase:TM A Research Site for Legal Professionals.
Clearing potential trademarks or trade names presents more of a challenge today than it did during the years preceding the popularity of Internet. Domain names, usenet and listserv messages, web or gopher site titles, logos, banners, and advertising, as well as link titles, or uniform resource locator (url) labels, provide new vehicles for trademark use.
Time-honored methods of conducting trademark due diligence research, though still relevant, fail to address this new environment. Existing commercial online trademark databases index data about pending, active, and in many cases, expired registrations. Typical common law resources, such as telephone, business, and brand name directories, and news, periodical, and trade journal databases, provide a way to investigate the use of unregistered trademarks in traditional mediums.
Newer domain name databases, like Whois or Global Name Search System, even allow for checking proposed trademarks or trade names against registered Internet domain names. But no single resource captures unregistered uses of trademarks or trade names on Internet. To discover them, researchers must devise their own strategies.
Where, in the vast world of cyberspace, should we begin? Using a make-believe software title, let’s formulate a research technique; one we may apply time and again, albeit with appropriate variations, when conducting trademark due diligence research on Internet. Our fictitious client proposes the label, “Virtual Chase,” for innovative software that claims to facilitate legal professionals’ use of Internet by streamlining the research process and simplifying information retrieval.
Step One: Check Registered Domain Names
After consulting traditional resources and finding no conflicting registrations or common law uses, we initiate an Internet search. Stopping first at Internic, we check the Whois database for U.S. and Canadian domain name registrations.
Because Whois allows only for alphabetical character-string searching; i.e., it compares search terms character-by-character against information in the database (abc matches abc and abcd, but not bca or readabc), we enter several variations of the potential trademark. Searching on virtualchase and virtual-chase, we find no registered domain names. Entering the terms, virtual or chase separately, however, causes Whois to abort the search. Apparently, it cannot process more than 256 matches.
Ideally, because of these limitations, we should check our results against a more powerful domain name database. But does one exist?
Virtual Internet, a worldwide Internet provider, offers the Global Name Search System. Claiming the ability to search 420 top-level domains (.com, .net, .gov, .uk, .fr, etc.), it fails to provide supporting documentation. We proceed, acknowledging the risk of using a database with unexplained search and retrieval functions.
For this fictitious assignment, we limit the scope of the research to the United States. Selecting the U.S. database and entering first the term, virtualchase, and then the query, virtual-chase, we find that virtualchase.mil and virtual-chase.mil are unavailable. What does this mean? Has the U.S. military, the only entity permitted to use the domain suffix, .mil, registered these names?1
Possibly, but not necessarily. Testing the Global Name Search System, I found that each query resulted in a similar finding of .mil unavailability. Moreover, the database returned exact matches only; i.e., the query, virtual finds virtual, but not virtual123 or 123virtual. For the U.S. jurisdiction, Global Name Search System appears more limited than Whois.
To ascertain whether the U.S. military does own a potentially conflicting domain name, we visit the Department of Defense’s Whois server. We find that DoD NIC has not registered either virtualchase.mil or virtual-chase.mil.
Step Two: Query Popular Search Services
Failing to locate a domain name database with better search and retrieval functions,2 we move on to the next stage of the research. We choose eight popular search services — Yahoo!, HotBot, Infoseek, AltaVista, Lycos, WebCrawler, Excite, and Magellan.
Looking for trademark or tradename uses of “Virtual Chase” on the web, we conduct our research separately at each service rather than execute multiple site searches at services like MetaCrawler or Inference Find. We perform separate searches for two reasons: 1) individual search services require different searching techniques not usually addressed by mega search services3 and 2) some multiple search services return only a portion of the results retrieved from each single search site they query.
Moreover, we perform searches at eight different sites because search services index data from various locations at different times, which may yield disparate results. For example, the query, “virtual chase,” at AltaVista and WebCrawler uncovers one web site title using that phrase. Similar queries at the other six services fail to uncover the same document within the first thirty titles (three screens at most sites) retrieved.
Step Three: Conduct a Veronica Search
Next, using the directory listing at Yahoo!:Computers and Internet:Internet:Gopher:Searching:Veronica, we look for possible uses of “Virtual Chase” in gopher directory or document titles.4 After searching several Veronica servers, we again find no uses of the potential trademark.
Step Four: Scan Catalog Sites
Fourth, acknowledging that search services do not; indeed, cannot index all data available via Internet, we browse several sites that index legal industry software product titles or information about them.5
At Yahoo!, for example, we peruse listings under the category, Business and Economy:Companies:Computers:Software:Law:Titles. We also scan references, or perform individual site searches, using resources like Nerd World, Software — Legal, FindLaw:Legal Practice Information & Materials:Legal Software and Technology:Products & Vendors, Benchin’ Software Review:Industry Specific:Legal:General, and Download.com:Business:Legal.
Finding no potentially conflicting trademarks or trade names, we proceed with step five.
Step Five: Search Usenet and Listserv Archives
The search for “Virtual Chase” in the “Current” database at Deja News yields two messages. Both, authored by the same person, reference Virtual Chase in the signature. Not surprisingly, the link leads to the same site AltaVista and WebCrawler uncovered earlier.
Of course, no guarantee exists for discovering the use of unregistered trademarks or trade names on Internet. Such is the unscientific nature of research. But those following these five steps, modifying them as necessary, implement a diligent strategy.
And now, the sixty-five thousand dollar question: Based on the information we uncovered, may our fictitious client register the trademark, “Virtual Chase,” for his software package? Hmmm, I think I’ll cop out here. I’m not a lawyer. Suffice it to say that the USPTO trademark forms lie before me; after finishing this article, I’ll trade my keyboard for a pen and register The Virtual Chase.
- The DoD Network Information Center (NIC).
- Databases searched include NetNames USA, DotCom.net Global Domain Name Registration, and TABNet. I did not include Thompson & Thompson’s commercial domain name database. See Saegis.
- For example, both Yahoo! and HotBot require the activation of an optional setting to enable an exact phrase search. Lycos’ help page notes a similar requirement, but the option did not appear in the drop-down box on the day I performed this research. Several other search services require surrounding quotations to conduct a phrase search.
- For information about searching Veronica, see Foster, Steven, How To Compose Veronica Queries, 23 June 1994. Online. Internet. Available via gopher gopher://veronica.scs.unr.edu/00/veronica/how-to-query-veronica.
- For information about finding catalogs, see The Compleat Internet Researcher, “Selecting a Site,” 26 June 1997. Online. Internet. Available via WWW http://aall.wuacc.edu/products/crab/text/sites.htm, and the December 1996 ResearchWire column, “Flashback! Employing Traditional Research Techniques on the Web.” Available WWW http://www.llrx.com/columns/flash.htm.
Gindin, Susan E., LawQuest, Inc., “Researching Trademarks, ” Legal Information Alert, (October 1975 [sic?] and February 1997; revised July 1997). Online. Internet. Available WWW http://www.info-law.com/tmsearch.html.