This piece is the second installment of a five-part series called “Why Should Librarians Care about Intellectual Property (IP)?” See links to the previous Part 1 below, at the base of this post.

This blog post series highlights why librarians should learn how to identify and search for different types of intellectual property, such as patents, trademarks, designs, and copyright. In the previous post, we looked at why librarians should care about patents and where to start your search for patent information. Patents grant an exclusive right to an invention (a new product or process), while trademarks protect the branding for a product or service. In today’s post, you’ll learn where to start a search for both US and non-US trademark information.

What are trademarks?

The US Patent and Trademark Office (USPTO) defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others”, while a service mark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.” Basically, a trademark protects the branding for a product, while a service mark protects the branding for a service. The term “trademark” is often used generally to refer to both trademarks and service marks.

Trademark rights will last indefinitely as long as the mark is used in commerce, and federal trademark registration is not mandatory (although it does confer a number of advantages, such as “a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration”). The ® symbol will be used after the mark if it is registered with the USPTO, and the symbols TM for goods or SM for services can be used to indicate “common law” trademarks or service marks (which are not yet registered with the USPTO). In the US, trademarks and service marks can also be registered at the state level.

The World Intellectual Property Office (WIPO) describes how “at the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.” The Madrid System allows you to “file a single application and pay one set of fees to apply for protection in up to 117 countries.”

Why should librarians care about trademarks?

Just like patents, trademarks are a crucial tool to help businesses and individuals make money off of the goods and services they offer. Librarians and information professionals who work regularly with business owners and entrepreneurs, including public librarians and corporate librarians, may occasionally be asked to assist with trademark searches to determine if a mark is unique, before beginning the expensive trademark registration process. Corporate librarians may also be asked to monitor and identify similar trademarks that possibly infringe upon an existing trademark. Law librarians may get requests to check trademark application statuses or even to retrieve the file histories related to a trademark application.

How can I find trademarks?

Librarians can start their trademark search process by first checking these free online resources:

• USPTO website: When searching for US trademarks, first try a search of the Trademark Electronic Search System (TESS) to locate the text and images of registered US marks, as well as pending and abandoned applications. For trademarks with design elements, try searching for trademarks assigned a similar design code. Check the application status and locate trademark file history documents using the Trademark Status and Document Retrieval (TSDR) system.
• WIPO website: Use the Global Brand Database to search over 34 million marks from 35 national and international collections, including marks registered through the Madrid System. Use the Nice Classification, an international classification of goods and services, to identify marks related to specific types of products and services.
• TMView: This free database created by The European Union Intellectual Property Office (EUIPO) allows users to search across trademark data from 59 trademark offices around the world.

Trademark searches can become just as complicated as patent searches, with multiple forms of classification (like the US design code and Nice Classification) and numerous jurisdictions to search at state, national, and international levels. Get valuable guidance from a research professional when conducting patent or trademark searches in order to find the most relevant results.

This piece is the second installment of a five-part series “Why Should Librarians Care about Intellectual Property (IP)?” See part 1 of this series: Focus on Patents.

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