Now we will discuss the pre-adoption investigation. The pre-adoption investigation can identify potentially conflicting marks and provide some indication as to whether a mark is likely to be registered or to be the subject of some type of unfair competition or trademark-infringement claim.

As a result, a pre-adoption investigation may be helpful if a party intends to register a mark or to just use it. It is a good idea to conduct a pre-adoption investigation every time a party intends to use a new trademark before investing any significant capital in the mark.

A party (or its attorney) has many tools at its disposal, such as:
  • USPTO website
  • State trademark records
  • State corporate records
  • Domain name records
  • Internet searches
  • Other common law databases
It is a very good idea to have a trademark attorney conduct the investigation because he or she will have a very good understanding of the concept of “likelihood of confusion.”

Once you complete the pre-adoption investigation, you should understand the rules for trademark usage and possibly even develop usage guidelines for your employees and/or licensees.

There are six basic rules for word-mark usage.

1. Trademarks must be used as adjectives, not nouns
2. Trademarks must be set apart from the rest of the text
3. Trademarks must not be combined with non-trademarks
4. Trademarks should not be used in a possessive or plural form
5. Trademarks should use the appropriate symbol (® for registered marks or ™ for unregistered marks)
6. Trademarks should not be abbreviated or used as acronyms