Cut Costs When Conducting Your Crucial Trademark Search

Typically, brand owners will manage trademark searches in-house using a third-party trademark search platform (such as Markify ProSearch™) or hire external specialists to conduct searches on their behalf. For example, they may order a trademark availability search report (such as through Markify Comprehensive Search) or outsource the entire process to experienced trademark searching analysts.

Each option has its pros and cons. For example, using your in-house team to conduct a trademark search can appear cheaper than hiring external professionals. However, many internal teams are not employed solely to conduct trademark searches, so may lack the niche focus and expertise possessed by external trademark search service providers—meaning their searches are likely to be less comprehensive and could leave your mark open to risks.

Tasking in-house teams with trademark search projects may also mean that these searches take longer, as employees will also have other ongoing tasks. In this scenario, outsourcing trademark searches could save your business money and improve the efficiency of your department by saving time—arguably just as valuable.

Then there’s the global nature of the IP market to consider. A third-party analyst can also take into account factors such as variations in spelling, translations, linguistic/ phonetic adaptations of search terms, and cultural differences, thereby optimizing your trademark searches.

Regardless of whether you choose to use internal or external professionals to conduct your trademark search; however, the key thing to remember is to complete them regularly and promptly—don’t put off until tomorrow something to do right away.

Since a trademark search is so essential to a business, it only makes sense that numerous online databases of registered trademarks have cropped up. With businesses being inundated with such online resources, it can be challenging to determine where best to conduct your search—or even whether this should be done online at all.

For easier categorization, these are the two different groups of databases:

• 1. National IP databases

The majority of territories have national IP databases run by their respective IP office, which contain information on all the trademarks registered within that territory. These databases are free to use and are often the first port of call for businesses looking to conduct a trademark search.

• 2. Commercial databases

Commercial trademark search platforms aggregate these online databases and other important data (such as common law trademarks, business names, and domain names) to provide a broader dataset. In addition to offering searches by name, keyword, number, image, or owner (as many national databases do), these databases may also provide further insights, such as availability reports on your shortlisted mark(s).

Specialist knowledge helps to optimize searches on such databases, which is why analyst-driven trademark searching services have become increasingly popular. Outsourcing your searches to external service providers creates an optimal alternative to conducting these searches yourself, saving time and money (not to mention responsibility or liability).

Many businesses now choose to outsource their searches to external service providers to combat wasting time on trademark searches. Not only does it mean the search itself will likely be completed more quickly but it also means you have time to focus on other important matters.

In a similar vein, outsourcing your trademark searches to external providers can also save you money. Conducting searches yourself, although ostensibly cheaper, could cost you later if you do not sidestep the three main risks outlined earlier—since those risks are often accompanied by significant financial losses. Hiring external providers to conduct these searches enables you to be confident and not stressed about something going wrong since the external expert you select will likely have years of specialized experience.

Regardless of the method or supplier you choose when beginning the process, you’ll want to be sure you have the right tools at your disposal for the trademark research.

When you’re looking to run a trademark search before registering a new mark, there are some things you’ll want to keep in mind.

First, it’s essential to determine which databases you’ll be using to conduct your trademark search. This will depend on many factors such as the territory or territories of registration, the kind of marks you’re searching for, and what results you expect to achieve from the search.

Next, aside from the available database options, another important resource when conducting a trademark search is people—hiring the right people to perform your trademark search can have a significant impact on the search results and, consequently, the success of your trademark.

Although many businesses have an internal legal department, again, few have one large enough to be able to exercise a full-scale trademark search without it taking a toll on the overall work output of the department. If you’re looking to conduct a trademark search yourself, it’s imperative to have enough professionals within your legal department to ensure things don’t get too backed up. Ideally, it’s also best to ensure that your team is international. Very few businesses have such a large team at hand, so searches conducted by global service providers are likely to be far more comprehensive.

Additionally, you should ensure that you have alternative proposed trademarks ready in case your initial proposal isn’t available. The vast majority of businesses find that their first choice for a trademark is not the most viable one.

Trademark searching is an art requiring extensive experience and knowledge. Even if you choose to use the commercial databases we talked about earlier, it's important to have the in-house knowledge and time to conduct trademark searches. If not, you could find your chosen mark is refused registration, in which case the costs of researching and applying to register your trademark will have been wasted, as well as any fees paid to your IP agents during this process.

While trademark lawyers rarely share the same opinions, all would agree that launching a new product or service without first investigating prior rights poses a risk—not only a financial disaster but also a professional embarrassment. Expediting your trademark search by assigning it to external service providers can significantly decrease, too.

Types of Searches

The internet radically changed the dimensions of trademark law. The digitization of the trademark world dramatically transformed the trademark search process, making it a less obscure and mysterious discipline. Today, with sophisticated algorithms, powerful databases, and search engines in play, industry practice has evolved that involves the use of two main types of search:

• 1. “Preliminary” search, also known as “pre-screening,” or “knockout” search

The primary purpose of a pre-screening search is to rule out names that are more obviously unavailable. It does not provide a definite opinion on the registrability of the remaining candidates, rather it identifies apparent conflicts at an early stage and provides an explicit “no” to proposed names.

• 2. “Full availability” search

The more comprehensive full availability search is generally conducted in each jurisdiction of interest to identify similar prior trademarks. Depending on the results, external legal counsel may also be required to provide formal advice on registrability on absolute and relative grounds for refusal.

Inspired by the Nestlé model, Brandstock (now part of the Questel group) developed its ‘Deep Screening' trademark searching service, combining the speed of pre-screening with the depth of commercial analysis necessary to produce meaningful insight into business risk.

The trademark searching service provides rapid profiling of business risk, which ultimately enables better decision-making and reduces costs. This approach, which we believe has taken trademark search to an entirely new level of sophistication and relevance, is made possible only by working closely with each client and using the best suppliers.

As Nestlé has stated in the past: “Each search strategy needs to be tailored to fit the situation and requires making choices about the ‘what, when, where, and how.’ Advising clients of the real-world risks in adopting a mark involves a multi-stage process including legal analysis, some detective work, intuition, judgment, and a perfect sense of how trademark disputes play out in a particular market.”

Our analyst-driven trademark search begins by identifying identical marks as well as marks that are visually, phonetically, or semantically similar. The second stage involves extensive online searches to detect instances of use that might give rise to conflict in specific countries. Once a potential conflict has been identified, the focus is on the specific business and information that will help to evaluate the likelihood of that business taking action.

Following expert review and ranking of each mark's risk level, the full search results and derivative reports are then available through our dedicated online platform, giving clients the ability to take further action as required.

Ultimately, centralizing and consolidating the trademark search and clearance processes delivers added value. Such a holistic approach ensures that companies can meet today’s business demands faster and more efficiently.

Why not save time, money, and stress for your trademark team by outsourcing trademark searches? Find out more by downloading our free guide to trademark search best practices—or watch our recent webinar exploring how combining analyst expertise with cutting-edge algorithms can help brand owners and their legal advisors create effective trademark searches.