September 26, 2008

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Presenter's Blog

The following is an outline of the roundtable discussion:

1. Devising an Appropriate Search Strategy
   
   1. Is “Whatever can be done until time and money are exhausted” a strategy?
   2. What is the purpose of the search?
      
      1. Clearance (avoidance of infringement; demonstrating dilution)
      2. Due Diligence (confirm status of claimed assets, uncover others)
      3. Other? (competitive intelligence?)
   3. What should be the geographic scope of the search?
      
      1. Which countries are relevant?
         a) Where will the mark be used?
         b) Where will licenses granted?
         c) Where will products be manufactured?
      2. Which countries are mission critical?
      3. Are there any countries where a negative search report would cause client to drop proposed mark?
   4. What type of search should be used?
      
      1. Screening searches
      2. Clearance searches
      3. Searches with an opinion of local counsel
   5. Special considerations for design searches?
   6. Other searches
      
      1. Trade names
      2. Common law searches (e.g., Germany: software titles)
2. Screening Searches
   
   1. Supra-National and Regional Databases:
      
      1. WIPO International Registrations: “Romarin” replaces “Madrid Express”
      2. CTM Registrations
   2. National Databases:
      
      1. Refer to Search Strategy and compare list of most important countries with those databases available online for searching
      2. Search tools: pro and con, cost effectiveness
         a) Commercial vendors such as CT Corsearch (Advantage Screening) and Thomson Compumark (SAEGIS)
         b) Individual offices: how to find, ease of use, limitations
   3. Is an opinion of local counsel required? helpful?
3. Clearance Searches
   
   1. Search Firms
      
      1. Thomson and Corsearch?
      2. Regional aggregators?
      3. National sources?
   2. Local Counsel
      
      1. Is it worthwhile to obtain opinion of local counsel?
      2. What do you do with an opinion that says a citation “Could be problematic”?
   3. Follow-up: who and when
      
      1. Use investigations
      2. Cancellations
      3. Purchase of prior mark
4. Identifying Other Names and Marks
   
   1. General search engines
   2. Domain names
      
      1. Do you find them useful in comprehensive U.S. searches?
      2. DomainTools allows “letter string” searches under certain TLDs
      3. Other services?
   3. Other “common law” resources?