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

Princeton, NJ |

Which one is better?

Attorney Answers 7


  1. 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 is not intended to create, nor does it create an ongoing duty to respond to questions. The response does not form an attorney-client relationship, nor is it intended to be anything other than an educated opinion of the author. It should not be relied upon as legal advice. The response given is based upon the limited facts provided by the undisclosed individual asking the question. To the extent additional or different facts exist, the response might possibly change. Attorney is licensed to practice law only in the State of New York. Responses are based solely on New York Law unless stated otherwise. Pursuant to Internal Revenue Service guidance, be advised that any federal tax advice contained in this written or electronic communication is not intended or written to be used and it cannot be used by any person or entity for the purpose of (i) avoiding any tax penalties that may be imposed by the Internal Revenue Service or any other U.S. Federal taxing authority or agency or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein.


  2. 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, not "legal advice", and not "legal opinion". I am licensed as a patent attorney and in the State of Connecticut. Retain and consult an appropriately licensed attorney to identify the laws and facts material to your concerns.


  3. 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 should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  4. 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 areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.


  5. 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 question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.


  6. 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 at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.


  7. 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 information relevant to a question, but, in the end no attorney can properly advise a potential client based on the limited facts that can possibly be disclosed in a format such as this one.

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