The trademark search process can be broken down into two parts:
- Identifying exact and similar marks from both government databases and common law sources.
- Organizing those results into a report of overall risk assessment.
There are probably as many different ways to approach the above steps as there are brands in existence! We've consulted with numerous companies over the years—each with their own systems in place for getting it done.
With that said, there are some steps one cannot afford to skip, especially when it comes to generating dependable global search results. According to our research, 52 percent of trademark professionals are dissatisfied with the reporting efficiency of their search platforms.
5 Tips For Getting the Best Global Trademark Search Results
For attorneys, translating raw results into useful reports can take days.
Often, this is because the traditional search tools are clunky, cumbersome, and lacking in modern features. In this article, we're going to suggest that you can actually achieve better global search results in less time and for less money. It's simply a matter of having the right tools and knowing how to use them.
Here are five tips for improving your next round of global trademark search results.
1. Prioritize According to Budget
Before you begin your global search, you'll need to assess company priorities. Is it within budget to directly hire local counsel within all of your target countries?
Although this is arguably the best way to guarantee superior results, working with local counsel isn't always feasible. If budget is a concern, you may decide only to work with local counsel in one or two countries (i.e. the one with the biggest sales projections and/or the one with the most complex trademark regulations), or none at all.
What if you realize during the prescreening process that your chosen candidates are unlikely to come up high-risk? You may decide to conduct a comprehensive global search via a legacy provider or do it in-house with the assistance of DIY software like TrademarkNow.
2. Be Linguistically Savvy
Language is a funny thing. The exact same phrase can mean something entirely different from one country to the next.
While alternative word meanings can provide comic relief in casual settings, they can also provide epic stress in business transactions. Who needs the unnecessary hurdle of a lewd or confusing name when marketing their goods and services?
When evaluating an international trademark candidate you should:
- Search for negative connotations, vulgar interpretations, and unexpected meanings.
- Understand the root components that are most important to search efforts.
- Understand the associated prefixes, suffixes, and synonyms.
- Search for phonetic similarities in the languages of your target regions.
Unfortunately, creating a global search strategy for a multi-word trademark can feel complex. After all, no attorney can reasonably be expected to know the way all words sound in all languages.
The easiest way to conduct accurate meaning assessments? NameCheck – click here to learn more.
3. Utilize Updated Information
Imagine spending tens of thousands of dollars on a global search analysis, only to learn later of a similar mark when facing opposition:
Why didn't you see this sooner?
How was this possibly overlooked?
Unfortunately, these kinds of mistakes do happen. Most of the time, it isn't because someone wasn't doing their job—but because they were simply acting on inaccurate information.
Trademark database updates vary from country to country, ranging from once a day to once a week. Traditional legacy providers (e.g. Clarivate Analytics) are then responsible for updating their databaseswith that information.
Since most updates are made by actual human beings, it's understandable that databases cannot be depended upon with absolute certainty.
The Bottom-Line: Triple check the information that is forming the basis of your opinion for accuracy before moving forward in the registration process.
4. Check Owner Litigiousness
When interpreting global search results, it's important to see "the big picture."
Similar marks must be evaluated in terms of risk, and a large part of that is dependent on who owns said marks.
For example, if IBM owns a similar mark in a priority country, you may want to reconsider your candidate. Conversely, if you are looking at a one-man show, you may be able to strike an agreement.
The quickest way to determine owner litigiousness is with technology-assisted software like NameCheck.
The program provides visually mapped overviews, answering questions like:
- How many brands does the owner have trademarked throughout the world?
- Are they trademarking in the same countries that I am?
- What Nice Classes do their brand names fall under?
- How many oppositions have they filed in the past?
- What is their contact information?
The more information you have regarding potentially conflicting marks, the more equipped you will be moving forward in the registration process.
5. Search By Product Type
Do you typically rely on Nice Classification when generating global search results?
We recommend also searching by product type as an additional layer of protection. Since different countries have different trademark regulations, maintaining continuity throughout the global search process can be challenging.
For example, Germany does not require specific descriptions of use under class headings. As such, you might miss something important if only searching by class. Further, some classes are notoriously vague.
Consider Class 9: Electrical and Scientific Devices— the category holds both fire extinguishers and smartphones! The only way to ensure you don't miss those important details is to search by product type through a database like TrademarkNow.
BONUS TIP - Search Company Names
Every country has a "company house," where business names can be registered. Of course, registering a company name isn't synonymous with trademark rights.
Take Norway, for example. Say you go to register a new company name. Government officials will only conduct an identical search within that registry. Another company with a very similar name could be completely overlooked during the process.
Since company names can be the basis for both securing and opposing trademark rights later on, checking registered company names is imperative.
Get Better International Search Results Now
We can all agree that conducting a thorough international search requires more than just open-source, government platforms, but that doesn't mean relying on costly legacy providers is the only option.
Take back control of the international search process with TrademarkNow.
Our technology-assisted software is powered by a revolutionary algorithm that allows business to generate comprehensive risk assessments in seconds.
The best part?
UNLIMITED SEARCH—for one flat fee.
Ready to learn more?