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Rubik’s Cube Intellectual Property

In honor of the Rubik’s Cube craze that has recently hit the Galvani household, we decided to take a closer look at how this iconic toy was created and what type of intellectual property protection it has enjoyed over the years.

Rubik's Cube

Rubik’s Cube

Erno Rubik was a Hungarian design teacher who loved puzzles.  He set about creating a toy based upon geometry in hopes of helping his students learn about three-dimensional objects.  Rubik invented a toy with 26 tiny cubes in six different colors joined together into one big cube that he called the “Magic Cube” in 1974 and by 1980, it was being sold in toy stores world-wide under the name “Rubik’s Cube.”  This famous puzzle toy has been the subject of various infringement suits over the last forty years.

Rubik received patent protection for the Rubik’s Cube toy in Hungary in 1977.  He obtained little patent protection world-wide, however, only receiving patents in Belgium and the United States.  Rubik was granted a U.S patent on March 29, 1983 for a “Spatial Logical Toy.”  Rubik granted the toy company Ideal Toys a license to sell the Rubik’s Cube toy.  Larry D. Nichols had a 1972 patent for a “2x2x2 Puzzle with Pieces Rotatable in Groups,” which was for a 2×2 puzzle held together with magnets.  He sued Ideal Toys for patent infringement.  After losing this infringement case in 1984, Ideal Toys appealed and, in 1986, a court determined that the original Rubik’s Cube toy did not violate the Nichols patent, but a pocket-sized version of the Rubik’s Cube did.

The U.S. patent for the Rubik’s Cube expired in 2000, but Seven Towns, the exclusive licensee of Rubik’s Cube’s IP rights at the time, had a creative strategy for finding protection in another way.  Seven Towns attempted to register trademark – or trade dress – protection in the shape of a Rubik’s Cube toy to prevent knock-off versions.  It registered the cube shape with the European Union Intellectual Property Office in 1999.  Trade dress and trademark protection can be extremely valuable since they can potentially continue forever in spite of the expiration of related patents covering the underlying product.  The EUIPO granted the trademark, and Seven Towns enjoyed its protection until it was challenged in 2006 by another toy company called Simba Toys.  After a 10-year battle, Simba Toys won its argument that the cube’s shape contained a technical solution that should be protected by a patent, not a trademark.  The EU canceled the Rubik’s Cube trademark.

These days, you can find plenty of knock-off puzzles, but most major retailers continue to sell the original Rubik’s Cube and related puzzle products under the Rubik’s name which are marketed as the “World’s No. 1 Puzzle.”



Converting to a Provisional Application

Clients often file a provisional application

Collegiate Mountain Bike Nationals, Purgatory

Collegiate Mountain Bike Nationals, Purgatory

and then file a non-provisional patent application on the same or similar subject matter within a year.  Clients and attorneys sometimes loosely refer to this as converting a provisional application into a non-provisional patent application.  It isn’t really.

What they are really doing is filing a non-provisional patent application and making a domestic benefit claim to the provisional application.  Because the content of the provisional is often so similar to the non-provisional, “converting” is shorthand, but ultimately a misnomer.

Converting to a Non-Provisional Patent Application

There is actually a technical meaning for converting a provisional application into a non-provisional patent application.  It is when you make a specific request to the Patent Office and ask that it take the provisional you filed and treat it as if it were a non-provisional patent application.  If you request this, your provisional better be in good enough shape to actually work as a non-provisional patent application.

Converting in this way doesn’t happens a lot, but it can be a useful loophole in certain circumstances.  For instance, normally, a design patent application cannot claim priority to a provisional application.  This means that often one must file a provisional and a design patent application at the same time, rather than delaying the design patent application.  However, you could potentially file a provisional and then convert it into a non-provisional.  Later, if the drawings in the non-provisional support it, you could file a design application claiming priority to the non-provisional.  This would make it seem like your design application’s priority actually extends back to the provisional’s filing date, which it does, because the provisional became the non-provisional.

Converting to a Provisional Application

This article is actually about the opposite type of request: converting a non-provisional patent application into a provisional application.  This asks the Patent Office to turn a non-provisional into a provisional for any number of reasons (none of which you have to disclose).

I recently had to do this when a client, intending to file a provisional application on its own, navigated the filing system incorrectly and accidentally filed a non-provisional application.  This kind of mistake is surprisingly easy to make in the Patent Office’s new Patent Center / DOCX filing system.

Why Convert?

If the content of the application is limited, as a provisional often is, then filing a provisional application as a non-provisional can be disastrous.  If the mistake is not caught early and the application publishes, it will create a disclosure.  That disclosure will have prior art effects against competitors but also potentially against the patent applicant.  And, if the disclosure is limited, there may not be enough substance to support decent claims.  This can ruin the patentability of the idea and potentially destroy a whole family of patents.

So, if you inadvertently filed a non-provisional application and meant to file a provisional, you can make a special request.

The applicant must make a written request and submit it to the Petitions Office.  The request must clearly identify the patent application and request conversion, preferably by identifying the correct applicable regulation.  Additionally, the applicant must pay fees.  The fees are actually fairly affordable.  In addition to the provisional filing fees (which would have had to have been paid originally anyway), a processing fee ($50 at the small entity rate) and a surcharge ($30 at the small entity rate) are due.  Unfortunately, the Patent Office will not refund the fees associated with filing the non-provisional.

The Petitions Office will consider a request which is proper.  The Petitions Office is quite backed up as of the publish date of this article, and it may take several months for review.  Another petition and filing fee can expedite review of the petition if the applicant wants faster consideration.



Limitation of Liability Clauses – You Definitely Want One, But Why?

Over El Paso and Ciudad Juarez

Over El Paso and Ciudad Juarez

Many sophisticated business contracts contain limitation of liability clauses. By contractually limiting your liability, you can better plan for your level of exposure in the event something goes wrong. Limitation of liability provisions can be helpful risk management tools if drafted correctly.

First, limitation of liability clauses often limit the amount of liability to which you can be exposed in connection with the contract at hand. This can be done by specifying an actual dollar amount as a liability maximum, but such a limitation may also expressed as a fraction of the amount exchanged in the contract. For example, parties to a licensing agreement may provide that the liability of either party will not exceed the amount of royalties earned during the most recent year during the contract term.

Additionally, limitation of liability clauses frequently limit the type of liability to which a party can be exposed. This is commonly done by prohibiting either party from incurring special, consequential, incidental, punitive, or indirect damages. Limitation of liability clauses may also exclude damages for lost profits or interruption of business. Essentially, the goal is to limit a party’s ability to collect with respect to any damages or other losses that are not directly caused by the party at fault. For example, imagine that a plumber tasked with installing new sinks in a restaurant bathroom accidentally causes a pipe to burst and floods a significant portion of the restaurant. The restaurant must close for 2 days while the flooding is mitigated. If the plumber has excluded the restaurant’s ability to collect lost profits or other indirect damages, the plumber may be responsible for fixing the broken pipe and cleaning up the water, but she will not be liable for any profits lost by the restaurant resulting from the 2-day closure.

In negotiating limitation of liability clauses, note that sophisticated parties often ask for “carve-outs”, a.k.a. certain bad acts to which the limitations will not apply. The most common carve-outs are gross negligence, fraud, and willful misconduct. However, a party may also ask for more specific carve-outs if they are particularly concerned about certain risks, like intellectual property infringement, breaches of confidentiality obligations, or security incidents.

Finally, note that certain liability limitations may be prohibited by law, so you should consult with your attorney to determine whether there are any restrictions on limitations of liability in your jurisdiction that might be applicable.



Is The Disney Font Copyrighted?

I have been in Boston the past week, and while visiting Faneuil Hall, my family noticed a storefront sign that felt familiar, shown at right.

Faneuil Hall is a nearly three-hundred-year-old building that a rich merchant, Peter Faneuil, had built to house various merchants.  This “Cradle of Liberty” was a meeting location for patriots in the years before the Revolutionary War.  Atop the Faneuil Hall is/was a golden weathervane in the shape of a grasshopper, apparently a good luck imitation of the grasshopper weathervane above the Royal Exchange in London.

Which brings us to the storefront name, Grasshopper Creamery.  The restaurant itself is gone now; I assume this place sold ice cream and fudge or something similar to tourists like me.  I have no idea why it is gone, but I suspect it was not because of intellectual property infringement.

The storefront sign font clearly is the Disney font.  Or a Disney font.  My wife immediately said, “hey, that looks like Disney’s lettering” when she saw the sign.  And it does.  The A, S, and E in the word signs look very similar.

So, is this trademark infringement?   Probably not.  Without doing something more, trademark rights do not attach to a font set, and they do not attach to particular letters such that the use of a similar font on other letters would constitute trademark infringement.  In other words, Disney’s use of the above trademark for ice cream and other food services would not create such strong rights that it could leverage them against a company with an entirely different name like GRASSHOPPER.

But, is it copyright infringement?  This question is tougher to answer.  To be clear, using a font for ten letters (WALT DISNEY) does not create ownership rights in a full set of 26 letters scripted in that font.  In fact, using a font for ten letters as a name (like WALT DISNEY) does not even create copyright rights in that name, because copyright protection cannot substitute in short phrases in names.

Then is there any infringement, any protection at all?  Potentially.  Typographers do protect fonts with copyright.  When an artist develops a new font, he or she can protect it and can register it for official protection with the US Copyright Office.  This gives the artist strong rights and makes it much easier to license to typesetters, printers, artists, and software companies.  Disney may have done this with its font.  If so, it alone would have the right to use those protected letters, and it alone would have the right to license the use of those letters.  In some cases, fair use can allow permissive use, but those circumstances are specialized, limited, and almost certainly would not cover storefront signage for a commercial enterprise.  I am not certain as to whether Disney did copyright its font set, so this question remains unanswered in my book.



NDAs and Compelled Disclosure

Non-Disclosure Agreements and contract clauses involving confidential information probably look very familiar to those involved in the business world.  It may seem like no big deal to agree to keep another party’s information confidential – you have standard policies and procedures in place to prevent unauthorized disclosures and all of your employees are required to sign their own NDAs.  However, what happens if you receive a subpoena or court order requiring that you disclose the confidential information of a third party?  Depending on what your contract says, you could be on the hook for an expensive response.

Overlooking the 40th St Trailhead in Phoenix

Overlooking the 40th St Trailhead in Phoenix

Most NDAs and confidentiality clauses expressly provide that the recipient of confidential information is permitted to disclose that information if it is required by law, whether due to a subpoena, court order, or other type of compelled disclosure.  Many such clauses also provide that in the event a recipient is legally required to disclose information, the recipient must first provide the party who had originally disclosed the information with notice so that they can determine whether to challenge the compelled disclosure.  It is customary for the agreement to expressly state that if the disclosing party wishes for the recipient to challenge the compelled disclosure, the disclosing party must do so at their own cost and expense or reimburse the recipient for their related expenses.  This prevents the recipient from having to incur its own legal fees to contest the disclosure of information that isn’t its own.

However, what happens if the challenge is unsuccessful?  Alternatively, what if the disclosing party doesn’t object to the compelled disclosure?  This is where things get tricky.  The recipient of the confidential information will then need to determine how to respond to the order requiring disclosure.  To do so properly, the recipient will almost certainly need the advice of counsel to determine what information must be disclosed, whether any information should be redacted, and to properly label, process, and produce the information.  Depending on how much information is responsive, the recipient could be on the hook for tens of thousands of dollars in legal fees simply by virtue of having access to a third-party’s information.

Accordingly, if you are about to sign an NDA or confidentiality clause in anticipation of your receipt of a significant amount of another party’s confidential information, review it carefully to determine what your obligations will be if you are legally compelled to disclose the confidential information.  If the agreement is not clear about who will be responsible for expenses incurred in connection with challenging the court order or otherwise disclosing information as required, consider amending the agreement to clarify that the disclosing party will be responsible for paying all related expenses in connection with the recipient’s response to the compelled disclosure.  And best practice is to seek the advice a competent local corporate attorney who can advise on you on the specific consequences and risks of the NDA.



Electronic Trademark Registration Certificates

The Trademark Office will soon start issuing electronic trademark registration certificates instead of paper ones.

The Trademark Office has for years created an electronic registration certificate and mailed a paper version, which has a decorative stamp and ribbon. After June 7, 2022, if trademark owners want a physical copy of the registration certificate, they will have to specifically order one and pay a $15-25 fee.

The Trademark Office has been trying to modernize its processes. The trademark offices of many other countries around the world have issued only electronic trademark registration certificates. The USPTO now harmonizes with those practices.

The Trademark Office also claims that “many of our customers indicated that they would prefer to receive their electronic trademark registration certificate in a digital format rather than as a paper certificate.” I find this a bit hard to believe because the digital format has been available for over a decade at an easily-accessible, public website. Perhaps customers have complained that they don’t want the paper certificate because it is redundant. I have actually found the opposite, that clients do want the paper copy and sometimes want additional copies for display.

The Trademark Office also claims this will increase the speed with which registration copies are issued. I’m not sure this is true either, as electronic trademark registration certificates are already available online the day they issue – the paper copies just come in the mail a week or two later. Rather than making the process faster, the Trademark Office just eliminated a step at the end. It should, however, have a slight environmental impact. The Trademark Office issues about 400,000 trademark registration certificates a year, which is at least some paper savings.

Applicants who file applications after June 7 will have to order paper registration certificates and pay a fee. If they want a one-page “presentation copy” on heavy paper with a gold foil seal, the government fee will be $25. If they want a certified copy – used in court or in foreign trademark office – the fee will be $15. A presentation copy is not a certified copy. Certified copies are officially stamped and issued, while presentation copies are essentially just ornamental.



Late US National Stage Entry

Mountain Biking in Park City, Utah

Mountain Biking in Park City, Utah

A late US national stage entry, from a PCT international application, is one way a US or international applicant can obtain patent protection in the US.

Patent applicants can seek patent rights outside their home country through a few mechanisms.  For utility applications, applicants file either direct foreign applications in individual foreign patent offices or initiate a centralized international process.  With direct filing, applicants use local counsel to file and examine the applications according to the local law.  With the international process, a centralized PCT application is filed, searched and examined under internationally-accepted rules, and is then sent to foreign offices where it can be processed according to the foreign country’s laws.

Deadlines govern the decisions and timing to file either directly or internationally.  A PCT application must usually be filed within 12 months of a priority date, usually the date a first application was filed on the subject matter.  There are methods for restoring a right of priority within a limited amount of time if that deadline is missed.  However, those methods are limited and not always available.

PCT Applications

Once filed, the PCT application processes through an “international phase” in which it searched by an international searching authority, and a written opinion is developed.  The written opinion determines whether the claims presented in the PCT application have met internationally-accepted standards for patentability.  A report on patentability is eventually developed which is based either on that written opinion or on subsequent examination following the presentation of amendments or arguments in response to the written opinion.

The “international phase” of the PCT application ends 30 months from the priority date, and the “national phase” (also called the “national stage”) begins with the filing of national applications.  This deadline is no less than 30 months, but in many countries it is 31 months, and some countries provide even more time under certain circumstances.  An applicant looking for patent protection in foreign countries must file a foreign application in those countries before the expiration of each country’s respective deadline.

Missed National Stage Entry Deadline

In many countries, missing the national stage entry deadline is the end of the road, and you can no longer pursue a patent application in that particular country.  In some countries, there may be exceptions.  Canada, for instance, is unique in that provides an additional 12-month extension period when the delay is unintentional.

Late US National Stage Entry

The United States is perhaps one of the most gracious countries when it comes to missed deadlines.

In the US, if the deadline on a regular patent application is missed (say, the applicant failed to respond to a rejection), then the application will become abandoned.  It can, however, potentially be revived.  If the abandonment was unintentional, and the delay in filing a petition to revive accompanied the missed response was also unintentional, then the application can generally be revived (with payment of a hefty governmental fee).  In some cases, there are additional requirements, and in other cases, the Patent Office may request more information about long delays, such as those over two years.  However, there are means for reviving abandoned applications.

A wrinkle of PCT law enables a PCT application to enter the national stage late.  Filing a PCT application will automatically constitute the designation of all PCT contracting states on that filing date.  In other words, the effect of the international application is as if a national patent application were filed in each contracting state.

So, when a PCT application is filed, the application is also considered to have been effectively in each PCT member country.  For the US, that means that a US application is considered to have been filed on the same day the PCT application was filed, even though a US application was not actually filed.

This means that the “US application” can go abandoned, which means it can be revived.  If an applicant who has filed a PCT application misses its 30-month deadline for entering the national stage in the US, that deadline closes, and the application is considered abandoned as to the US.  However, the US will allow it to be revived (again – revival is not always possible, it is subject to certain restrictions).

The US even has a form – PCT/SB/64PCT as of the time of this writing – that can be used in a petition to revive an international application.  It is named the Petition For Revival Of An International (PCT) Application For Patent Designating The U.S. Abandoned Unintentionally Under 37 CFR 1.137(a) and includes a checklist of some of the minimum documents that need to be filed along with a such a request.

Any applicant reviving a PCT application for national stage entry into the US would be well advised to contact and hire an experienced patent attorney.  A national stage entry on its own is a complicated process that requires a great deal of accompanying paperwork.  Certain translations, priority copies, international records, and other documents must be submitted for a national stage entry.  In addition, the Petition For Revival has another set of documents that must be furnished to support the request.  And the government fees, which vary depending on the size of the applicant, the type of filing, and the results of the international application, are high and non-refundable.



Trademark Applications Can Be Expedited or “Special”

Lemon Reservoir, Durango, CO

Lemon Reservoir, Durango, CO

The US Patent and Trademark Office processes trademark applications in the order in which they are received. Before 2020, that led to wait time of about 3 months before an application would be substantively reviewed by a trademark Examiner. This year, examination has slowed a bit, and Examiners are taking about 4 months to initially review a trademark application.

This 3 to 4 month delay right from the outset can feel like an eternity (though it doesn’t even compare to the delays for patent applications, which can sit 1-2 years after filing before receiving examination). But you are usually stuck with it. There are only two procedures in which an application can be made “special,” so that initial examination will be expedited: requests to make special and petitions to make special.  Detailed information is below, and official USPTO information is available at TMEP 702.02.

Request to Make Special

A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon the request of the applicant. However, the applicant must be the prior registrant or the assignee of the prior registrant, the mark must be the same as the one in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration. Because the request to make special is just a request and not a formal petition, there is no petition fee or other fee associated with the filing.

A request to make special must reference the trademark application serial number, so it can’t be filed contemporaneously with a new application. Instead, we file the application and then, after being award an application number, file the request. The electronic TEAS filing system has a form for these requests. This allows the designated office to receive and review the request, which improves processing time.

When completing the form, you must provide sworn statements regarding the new application and the old registration. For instance, you must provide: (1) the registration number for the prior registration; and (2) a specific statement explaining that: (a) the mark in the new application is identical to the mark in the cancelled or expired registration; (b) the goods/services in the new application are identical to, or narrower than, the goods/services in the cancelled or expired registration; and (c) the owner of the prior registration is the same as the owner of the new application.

Petition to Make Special

A Petition to Make Special can only be used when you need to expedite initial examination of an application because there is pending litigation, actual or threatened infringement, or the need for a registration as a basis for securing a foreign registration. There are special requirements, and these petitions require a great deal of care and attention when preparing. They also have a small filing fee associated with them ($100 at the time of this writing).



Four Seasons Total Landscaping Trademark

Phoenix Mountain Preserve

Phoenix Mountain Preserve

I don’t write about current political events, but I’ve been pressured into writing this post because of its significance with respect to trademark law. Trademarks are fundamentally about protecting the public. Yes, trademarks can become valuable assets for big business, but they gain that value through reputation, goodwill, and recognition in the marketplace. The more famous a mark, the more likely it is to be protected.

Proper use and enforcement of trademarks ensures consistency in consumer experiences and thus protects the public. McDonald’s provides an easy example of the essence of trademark law: when you go to a McDonald’s restaurant, you know exactly what you are going to get. You may not love McDonald’s, you may hate it, but you know just what it is they are offering inside. You may believe that McDonald’s has low-quality cheeseburgers, but you have that perception of all McDonald’s, so that you know if you visit Phoenix for the first time and visit a McDonald’s, you can get the same low-quality cheeseburger that you always get back in your hometown of Duluth. Or, if you think the milkshakes you drink at your local McDonald’s has just the right amount of sweetness and is the perfect texture and consistency, then when you walk through a McDonald’s in Denver you are expecting that same thing. In other words, trademarks don’t protect quality levels; they don’t indicate that a product is high-quality (or that it is low-quality), they simply protect the expectation in or consistency of quality. You can get the same experience at this brand store that you do in this other similarly-branded store, whether that is good or bad.

Most people would agree that Four Seasons is a trademark with a fairly high reputation of quality. Anyone going to a Four Seasons-branded hotel will expect quality consistent with that reputation. And, most would agree that Four Seasons is a fairly famous mark. The owners of hotel chain spend a great deal of time and money advertising their brand, and most people in the country are aware of and recognize the trademark.

Famous marks are accorded broad protection. Marks like Coca Cola, Pepsi, Facebook, Nintendo, Adidas, Mercedes Benz – these are examples of famous marks. If you saw a Mercedes Benz-branded bicycle, you would probably think that the bike is made by the car company, or somehow affiliated with the car company, and you may also believe that the bike is of a fairly high-quality consistent with their automobiles. Fame is the ability of a mark to create an association between the product (bike) and the source of that product (Mercedes) even when the product is different from the source’s core products (automobiles). The more famous the brand, the wider that each of product. It is hard to imagine any product being marked with COCA COLA without someone thinking that it comes from the soda company in Atlanta. Coca-Cola dinnerware? Could happen. Coca-Cola bicycle? Sure. Coca-Cola spark plugs? Maybe?

Four Seasons is not so famous as Coke, but it is still pretty well known. And that is where our president became confused. His campaign, seeing the name “Four Seasons” in Philadelphia, immediately made the association between the brand and the luxury hotel chain and did no further checking. Of course, we know how that turned out.

Now, was this an example of trademark infringement? Has Four Seasons Total Landscaping stepped on the hotel chain’s rights when it picked its name?

Almost certainly not. While famous trademarks do have broad protection, there are limits. Landscaping services are very different from the hotel and spa services protected under the mark. Because the two sets of services are so different, in fact, they are able to coexist without the potential for consumer confusion. Which makes the President’s mistake all the more amusing – it was the exception proving that, for most people, similar trademarks for very different services shouldn’t be confusing.

P.S. – the comedy of errors continues, because on November 12, an individual in Hawaii filed for FOUR SEASONS TOTAL LANDSCAPING in connection with “entertainment services in the nature of a television series featuring comedy; entertainment services, namely, a website featuring information regarding a comedy television series; providing online, non-downloadable television programs and entertainment programming related to a comedy television series; and providing podcasts in the field of comedy television programming.”



Knockout Searches for Trademarks

Knockout searches are searches run before filing a trademark application to assess,

Phoenix Mountain Preserve

Phoenix Mountain Preserve

primarily, the viability of obtaining a registration on that trademark. Whether you can use the mark is actually a slightly different question from whether you can register it, but a knockout search will reveal some information about the use possibilities. A knockout search is usually a recommended step before filing a trademark application.

There is no requirement that any sort of search be completed prior to a trademark application filing. Many clients forego them. However, the Trademark Office will always run a search – and so clients who skip this first step run the risk that their applications will be rejected by a similar mark that the Office pulls up in its search.

The knockout search reduces this risk. Knockout searches are usually a few hundred dollars or less, compared to the thousand-plus dollar cost of a trademark application. This is money well spent when the search reveals a conflicting mark has already been registered. It gives you the ability to decide whether to proceed forward with knowledge of that risk or to change your mark to avoid it.

When we conduct a knock-out search, we perform it on the federal database, including both the Principal and Supplemental Registers at the Trademark Office. This therefore covers every single mark that could ever be cited against your mark once you submit an application. We used to develop and run each search manually, querying the federal database directly. Now, we also run our searches through a piece of proprietary software which performs an AI-based search of the federal database. With this two-pronged approach, we have found we can provide more accurate results and better predictability to our clients. To that point, in the almost three years since we adopted the two-pronged approach, and for those applications that we ran pre-filing searches, only one was rejected in light of a mark that the Trademark Office found in its search.

Any knockout search should not only deliver a set of raw results – the potentially-conflicting trademark registrations – but should also be a report containing analysis. You hire an attorney not to run a search but for his or legal advice. Trademarks receive rejections if they are too similar to another mark; this question of “similarity” is based not just on the marks themselves, but a number of other factors that a trademark attorney should be experienced in recognizing and evaluating. Therefore, any knockout search should review those factors. In our searches, we provide the most relevant results as well as a determination of registrability, identifying the level of risk of a rejection based on those results.

Some firms only search word elements – trademarks that contain nothing but words. Searching marks that contain design elements, or that are solely composed of design elements without any words, is more difficult. However, there are advanced searching features on TESS (the Trademark Office’s search interface) which allow you to search by design element or design code. We exploit those advanced features, and our software also allows us to search design marks.

Trademark knockout searches are not comprehensive searches. A comprehensive search usually looks for similar marks at the Trademark Office, just as the knockout search does, but then goes further by looking through business name registrations, phone number databases, internet domain names, common law usage. Clients run comprehensive trademark searches if they are concerned with the potential for infringement, if they need to review foreign trademark databases, or if they believe they will expand their business quickly into many locations across the nation.

Knockout searches are also different from direct searches. A direct search covers essentially only the mark itself. This is often the sort of search that a client runs on its own; if so, clients can sometimes mistakenly believe that their marks can be registered because the direct search didn’t return any results. However, ignorance is not bliss – the direct search does not replicate the search the Trademark Office runs, and so it is not an accurate predictor of the likelihood a mark will register. Only a knockout search will do this.