When news of the Trademark Modernization Act of 2020 (TMA) was announced the term,
“reasonable investigation” started trending, cited as a requirement for expungement or reexamination petitions.
Once the draft rules were published, ‘investigation’ appeared a total of 28 times, identifying this key component
& reinforcing its importance for success.
The USPTO stated that “a single search using an internet search engine likely would not be considered a reasonable investigation,” but also, “a reasonable investigation does not require showing that all of the potentially available sources of evidence were searched.”
Fortunately, striking the balance between the two is something that the team at Vaudra International
has honed & perfected over nearly two decades of trademark use investigations.
Per the TMA, a REASONABLE INVESTIGATION is
"...an investigation that produces reliable and credible evidence
of nonuse at the relevant time."
WHERE TO FIND ANSWERS:
According to the TMA guidelines, “As set forth in proposed § 2.91(d)(2), appropriate sources of evidence and information
for a reasonable investigation may include, but are not limited to:
State and Federal
Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency
Internet websites and other media likely to or believed to be owned or controlled by the registrant
The registrant's marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services
Internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale
Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant's use or nonuse of the registered mark
Print sources and web pages likely to contain reviews or discussion of the relevant goods and/or services
Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services
What steps can you take to conduct your own
Check out the video from Vaudra's CEO for some helpful tips & tools.
Whether seeking a 'reasonable investigation', anonymous IP acquisition,
sample buy or brand protection strategy, your search is over.
Trademarks, patents or copyrights, counterfeit, infringing or diverted --
our extensive experience enables us to craft investigations tailored to your objectives & budget.
Vaudra International readily collaborates & strategies with our clients,
as part of a comprehensive effort or on an ad hoc basis.
We welcome the opportunity to connect, learn about your IP challenges
& see if there are ways that we may add value to your efforts.
Complimentary, confidential consultations available.