Trademark Knock-Out Search: Scoring Criteria

Scoring for each component will be done on a 4.0 scale. Below is brief explanation of what I look for in each category.

Search strategy & documentation (25%). Is sufficient documentation provided to show the search strategy used as well as the results, including the most pertinent results? How thoughtful and thorough was the search strategy? Has the student used a variety of search terms, including formatives and sight-sound-meaning variants? Searched by international class? Goods/services? Used various methods? Has the student used search tools besides the USPTO website?

Registrability (15%). Discussion of whether the mark is registrable. Issues to be discussed will vary with the mark but may include matters such as the spectrum of distinctiveness, descriptiveness, surnames, and geographic indicia.

Protectability (5%). How strong will the selected mark be? Is the chosen mark strong enough that potential junior users will need to steer clear, or is it so descriptive or highly suggestive that newcomers might be able to get “closer” to the chosen mark?

Liability (30%). What is the likelihood of infringement (or if appropriate, dilution) between the chosen mark and senior users? Does the client letter discuss the most pertinent search results, grouping the hits in an intelligent manner? For each relevant hit or relevant grouping, does the letter consider the likelihood of confusion (LOC) factors, including sight-sound-meaning?

Bottom line (5%). What do you recommend the client do? Have you made it clear that this is a knock-out report and not a clearance? Is the analysis and recommendation reasonable advice of counsel, or is it instead inappropriately slanted towards “helping” the client?

Writing/organization (20%). This category looks to matters such as:

• Is the client letter well-written?
• Is it crafted with the audience in mind, i.e., a client who has some knowledge of basic trademark law?
• Regardless of whether the file is submitted in paper or electronic form, is the case file well-organized?
• Can the senior partner and client work through the letter and documentation in a meaningful and efficient way?
• Are the issues and sub-issues well-organized?
• Regarding documentation, is it well-organized and sufficiently thorough that the supervising attorney and client understand the search strategy and results?
• Regarding liability, are the relevant marks grouped in an intelligent way that fosters analysis? When there are several groups of relevant hits, does the liability analysis organize the LOC analyses in a meaningful way?

Posted Feb. 8, 2015 (v 1.0)