Do most attorneys use Legalzoom and Thompson Reuters for trademark searches?

Asked over 1 year ago - Princeton, NJ

Which one is better?

Attorney answers (7)

  1. Frank A. Natoli

    Pro

    Contributor Level 20

    12

    Lawyers agree

    1

    Answered . Hi,

    How lawyers conduct trademark due diligence really depends. Legal Zoom is really a self-help platform and most lawyers I know would not use them for such things but of course I am sure some use their system like that.

    Thompson is another great product and there are more. What these systems do is aggregate search databases. The main database is the TESS/TARR at the USPTO. But as you may be aware, in the US you have to consider the common law. This is where searching gets tricky. So, for example, the product we use covers all the 50 state TM registries, all 50 Sec of State databases (for business registrations) voluminous business directories, domain registries, we include the Canadian IP registry and of course all major search engines. If our clients wish to include some international databases such as the UK, Germany, WIPO , etc we can add them on as well.

    We can access this all at one time, but we pay very good money for that. Most lawyers outsource their search then they condcut the analysis themselves based on those results. Lawyers like us who handle a great many trademarks find it more cost-effective to conduct our own searches and this saves our clients money as well.

    I will add too that unless you are a TM lawyer you need more than just a solid thoughful search you need a professional analysis.

    I will link you to some helpful info below. I too am a NJ lawyer, feel free to contact me if you care to discsuss this process in more detail.

    Best regards,
    Frank
    Natoli-Lapin, LLC
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the... more
  2. Alan T Harrison

    Contributor Level 12

    8

    Lawyers agree

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    Answered . I do not use either. As a matter of principle I avoid LegalZoom. Thomson Reuters is expensive. I prefer to use the (free) USPTO trademark search page, which enables search logic fairly comparable to any of the paid services. Another free option is ROMARIN for international trademarks.

    However, you should ask yourself whether you really understand the legal standards relevant to trademark searching, in particular, the various regional standards for "likelihood of confusion." If you don't fully understand what you are looking for, you are guaranteed (i) not to get good results and (ii) not to understand the results that you do get. Much like wiring your own house without the training that supports an electrician's license, except in the trademark search scenario your risks include money liability and possible loss of brand, rather than a devastating and possibly uninsured house fire.

    This is why my colleague advised that you should have an attorney perform and assess the search.

    ATTORNEY ADVERTISING. You are not my client. I am not your attorney. The above comments are not confidential,... more
  3. Daniel Nathan Ballard

    Contributor Level 20

    7

    Lawyers agree

    Answered . Trademark attorneys do not do their own full-blown trademark searches. They hire someone skilled in that art with access to all the right databases. For U.S. registration purposes, I buy The Total Package search offered by the company linked-to below. You'll notice that it includes a search of the Federal Trademark Office, each state's trademark office, each state's corporate name database, internet domain names, common law search, and company name and in-house common law searches.

    International searches must be tailored by evaluating the business goals of the client.

    Two takeaways:
    (1) A proper trademark search is broad and requires a skilled searcher to appropriately define the search queries, to weed out irrelevant results and to present the report intelligently and quickly.
    (2) Only a trademark attorney can provide the searcher with the proper information on which to base his search, to evaluate the results and to advise the brand owner on the legal risks associated with using a mark in commerce.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and... more
  4. Luca Cristiano Maria Melchionna

    Contributor Level 16

    5

    Lawyers agree

    Answered . These are only two of many databases available to search for marks. Do not engage in do-it-yourself. Please refer to an IP attorney. Best

    This reply is offered for educational purpose only. You should seek the advice of an attorney. The response given... more
  5. Bruce E. Burdick

    Pro

    Contributor Level 20

    4

    Lawyers agree

    1

    Answered . Legal Zoom? NEVER - legal zoom is a cheap way to zoom into legal trouble. Thomson Reuters, not usually, but occasionally, particularly on really important brand launches where major investment is involved. Otherwise, TESS - Google - domain reg. search - Amazon -eBay will generally give what is needed. One of the main differences is State TM registrations, which TR will pick up but which Google will not, at least not yet. But Google is amazing and if they wanted to they could add that feature and torpedo the others. The Google patent search engine is good and steadily improving, so it would not be surprising to see a high quality TM search engine from Google some day.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more
  6. James Juo

    Contributor Level 16

    3

    Lawyers agree

    1

    Answered . I think few attorneys, if any, would use Legalzoom for trademark search. Many attorneys use Thompson Reuters for trademark searches, but it tends to be on the pricy side. There are other services that will perform trademark searches at different price points (which may vary in terms of scope and depth).

    This answer is for informational purposes only. It is not intended as specific legal advice regarding your... more
  7. Gene Bolmarcich

    Contributor Level 9

    3

    Lawyers agree

    Answered . NO attorney would EVER use LegalZoom. Nor should any PERSON.

    This answer is not legal advice nor should it be construed as such. I always attempt to provide factual... more

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