E. Using a Trademark Search Service

Specialized trademark search firms traditionally conducted searches only for trademark attorneys. Even today, some of the largest trademark search firms refuse to conduct searches for anyone but a lawyer. But most search firms aren't so choosy and will conduct a search for anyone willing to pay them.
1. Why Use a Search Service
Before putting a lot of time and money into promoting your website, you'll want to be as confident as possible that your domain name is "bulletproof" when it comes to trademark infringement claimsThe free Internet search described in Section C is a good start, but commercial firms will give you abetter idea of whether your name will survive a conflict with a pending or registered mark. Most businesses adopt a cost/benefit approach and hire a search service to do a final trademark search.
Here are some of the things a commercial search service can do for you:
Obtain a search report that is completely up to date. The PTO's website is always about two to four months behind. (The site tells you when the database was last updated and when the next update will be.) So if someone has filed an application to register a trademark very similar to your proposed domain name within the last few months, your search won't pick it up. A four-month lag time is tolerable to initially determine the legal viability of your proposed domain name, but you should definitely have an up-to-date search done before pouring money into promoting the domain name.
Search state (not just federal) trademark registration records. Every state allows the registration of marks that are used primarily in that state. If your choice for domain name is the same or confusingly similar to one of these state-registered marks, you may run into trouble if the mark's owner decides to use the mark for a domain name, only to discover that you have registereit first. So it's always a good idea to run your choice by the list of state trademark registrations, something a commercial service can do for you more efficiently than you can do for yourself.
Locate variations on and fragments of the distinctive part of your name. Sometimes similarity in sound or appearance of just a portion of two names is enough to cause customer confusion. Experienced searchers have a knack for spotting potentially troublesome fragments and will probably do a better job of finding them than you would.
Search proprietary databases for unregistered marks. Over the years, commercial search firms have built their own private databases of business and product names and logos. These firms also have access to, and are adept at searching, the many hundreds of commercial databases available through Dialog and other online aggregators of data. A search of these databases may produce conflicts that you probably would not discover in your relatively disorganized search for unregistered marks, whether you searched on the Web or in a library. Although most of these databases are available to the general public, you must pay either a subscription or one-time use fee, and learning to use them requires some effort.
TipTrademark: Legal Care for Your Product and Service Name, byStephan Elias and Kate McGrath (Nolo), can give you a good start if you want to do your own comprehensive search.
2. Cost Factors
You can hire either a trademark search firm or a trademark lawyer to handle a search for you.
Because only attorneys are allowed to offer legal advice about potential trademark conflicts, trademark search services offered by attorneys tend to cost the most. If you hire a trademark attorney to advise you on the choice and registration of a domain name, the attorney can arrange for the trademark search. Some attorneys do it themselves, but most farm the search out to a search firm. Once the report comes back from the search firm, the attorney will interpret it for you and advise you on whether to go ahead with your proposed domain name.
Trademark search firms offer many different levels of services, and their fees vary accordingly. The price often depends on how much handling the information receives before it is delivered to you. Generally, raw data is cheap; highly processed and organized data is more expensive. For instance, if the search just involves running one proposed domain name past the PTO's database, the cost usually will be less than $50. But if you want the searcher to seek out registered trademarks that in whole or in part might resemble your name in meaning, sound and appearance, then the cost increases as the labor required does. If you also want the search to include an intensive hunt for unregistered marks, you are getting up into the several-hundred-dollars range.
The difference in rates among search firms may also reflect variations in the coverage of the search, the type of report you receive, the experience of the searchers or simply economies of scale. Some firms may advertise an unusually low price to draw in customers, but then add on charges that end up exceeding another firm's total price—a professional version of bait-and-switch advertising. To shop sensibly you need to know the total cost of each service, so be sure to ask questions before committing yourself. For example, does one fee cover the whole cost, or is there also a per-page charge for the report?
3. Finding a Service
There are many trademark search services in this country. You don't have to worry much about where a particular service is located—phone, fax and email make it possible for a customer in Bangor, Maine, to comfortably deal with a service in Austin, Texas. But if you want a local service, consult an electronic "Yellow Pages" such as those offered by Yahoo!, Netscape and the major search engines. Although some trademark search firms limit their services to lawyers, most also do searches for individuals and businesses.
Some trademark search services will try to convince you that you're stupid if you don't search every corner of the globe for possible conflicts. Don't just agree; make an independent decision about what scope of search is appropriate for you. Also, some search services provide additional services, such as the preparation of applications for federal and state trademark registrations. Like trademark lawyers, these businesses have a vested interest in convincing you that you will be better served by paying them to handle the tasks in question than by doing them yourself. If you feel that this point of view—which may in some cases be perfectly reasonable—is being too aggressively pushed in your situation, get a firm hold on your wallet and consider finding another service.
Silicon Valley Searchers
California's Silicon Valley is home to the Sunnyvale Center on Innovation, Invention and Ideas, or Sc[i]3 (pronounced Sigh-Cubed). It is one of three Patent and Trademark Depository Libraries—the others are in Detroit and Houston—that have formed partnerships with the U.S. Patent and Trademark Office. Under this partnership, these libraries are encouraged to offer a variety of information services, including trademark searches, for very reasonable fees, usually a notch or two below those charged by commercial firms.
Sc[I]3 offers searches of varying scope. Like most trademark search firms, Sc[i]3 doesn't interpret its results; it leaves that to you. Your basic task is to review the trademarks that Sc[I]3 turns up in its search and compare them to your domain name for the likelihood of customer confusion. (Chapter 7 helps you do this.) You can order a Sc[i]3 trademark search by calling 408-730-7290. Visit www.sci3.com for a current list of services and fees. You can get the results of the search within 24 hours if you are willing to pay a premium. Otherwise it takes a little longer.
You may also find help with your trademark search by physically visiting one of the other 80-plus Patent and Trademark Depository Libraries located throughout the United States. These libraries usually offer excellent reference services for people doing their own research. Visit www.uspto.gov and click Libraries-PTDLs on the home page for a complete list of locations and contact information.