Something that struck TrademarkNow’s founders when they started the company in 2012, and myself too when I joined it three years later, was just how challenging it was for lawyers to buy access to professional trademark search tools.
I myself come from the realm of stock photos, where I’d witnessed startups like iStockPhoto and Shutterstock use e-commerce solutions to dramatically simplify the process of buying a picture for business purposes – which, in turn, caused incumbent players like Getty Images to look at simplifying their pricing and subscription models.
Clearly, the same thing had not yet happened in the trademark legal-tech sphere. True e-commerce had yet to make its appearance here, at least with respect to trademark pros.
A Subscription Minefield
First, there was no way to buy an individual trademark search online – and the minimum threshold of searches offered for sale by the providers tended to be fairly high. Moreover, the typical annual subscription contracts required a lot of forethought, and some risk.
To gain access to sophisticated trademark search tools (ones with high-quality data across multiple country registries and other sources), a lawyer typically had to approach the database search providers, talk to their sales team, and go through a process of estimating their search volumes for the future.
The number of allowed searches on the providers’ tools would then be fixed for the coming year, and their number of searches tracked by the software over time. If the lawyer’s organization exceeded this pre-set amount, they’d then need to pay higher prices to view individual search results, or individual trademark details, or per country, depending on the product. If volumes were lower than expected, the unused searches were often simply lost.
Edits to searches – altering the name or sometimes product classes, for example – were treated as new searches and counted against the annual fixed total. Accessing more countries generally meant “spending searches” against one’s annual fixed totals. Sometimes web and unregistered (common law) trademarks were able to be included in the search results, sometimes not, but if accessed they too would usually be counted against the annual fixed totals.
So to get a complete picture of an individual trademark candidate’s risk tended to become fairly costly – even with self-service online tools. With every tweak being counted against the searcher, creativity and flexibility were often stifled.
TrademarkNow has indeed simplified the picture for legal teams facing high volumes of searches, by offering various annual subscriptions that are truly “unlimited” — your number of searches on our platform doesn’t factor into our subscription pricing, so you’re free to run as many name variations as you want, any time you want.
But for lower-volume organizations, with all the complexity and guesswork and expense involved, you’d imagine that many lawyers would just throw up their hands and say, “thanks, but we’ll just get by with the free tools”. And according to our market research, plenty have been doing just that for years.
The Limits of “Free”
TrademarkNow’s clients tell us that for important new brands, they tend to conduct two separate rounds of trademark searches: screening (or “knockout”) searches, and clearance (aka “similarity” or “comprehensive”) searches. The first is aimed at quickly and inexpensively narrowing lists of new mark candidates down to a few “good” ones for further, more careful study. The second step is to conduct that more-careful study, researching any and all relevant likelihood-of-confusion risks in order to greenlight new brands for launch and/or government registration.
According to our research, lawyers’ most common destinations for BOTH knockout and clearance trademark searches today are free government tools – including the United States USPTO’s Trademark Electronic Search System (TESS), and the European Union EUIPO’s eSearch Plus.
Other popular “trademark search tools” include the simple, ubiquitous Google search to find common law trademark threats (free, of course) – and searching for product names in the market via e-commerce sites like Amazon.com (also free).
We’ve met many trademark pros, even at some large corporations, who save costs by keeping spreadsheet checklists of industry-specific sites (marketplaces, competitors’ sites, etc.) which they use to check for threats in carrying out free, self-service clearance. This may be time consuming and painful, of course, but it can save a lot of money.
In addition, especially for the knockout search phase, in many cases lawyers find the free tools (and somewhat painful process) to be good enough. The USPTO’s TESS platform, for example, while a bit cumbersome and inelegant (at least in some lawyers’ opinions), can provide an adequate picture of a candidate’s exact and near-exact matches in the United States federal registry. Likewise, for Europe, the EUIPO does the same thing for Europe-wide registrants.
The problem is that these two sources leave a lot of gaps – and risks. The USPTO doesn’t cover US unregistered trademarks – which still have substantial rights under US common law, and so can still cause serious problems for new brands; nor does it cover individual State registries. The EUIPO doesn’t cover marks filed in the individual EU28 member countries’ registries, so to check “the whole EU” still means running multiple searches on multiple different country websites (plus unregistered sources, particularly in common law countries like the UK and Ireland).
The chore gets even more arduous when you want to self-screen / self-clear marks in countries that are largely unfamiliar to you. This often entails (1) determining if the country’s trademark office has a searchable database (or even PDF publications) online; (2) learning its interface, terminology and data structures, publication frequencies, unique regulations (e.g., absolute grounds for refusal), and quirks; and (3) self-merging your findings from different countries into a single report.
Moreover, national trademark offices don’t immediately account for international WIPO registrations, which apply in countries that are members of the Madrid Protocol - WIPO applications/rejections are typically added to the members’ national registries, but often several days, or even weeks, later). Nor do trademark offices cover unregistered names listed on Internet sources like domain names, apps, and social media, many of which could have trademark rights as well.
So for truly important new brand launches, running your own “free clearance searches” is typically either very risky or very labor-intensive, or both, depending on your situation. For launches of make-or-break new products or company / business unit names, it’s simply foolish to leave so many stones unturned.
And even for preliminary knockout searches, catching more “obvious problems” sooner can mean less time and money spent later in the clearance process. There’s nothing worse than giving your marketing team (or CEO) false hope that a name they’ve fallen in love with looks “strong”, only to have it fail in the clearance-search phase due to an opponent in a data source that you’d overlooked during screening. (Well, yes...not catching the opponent at all is worse!)
E-Commerce for Professional Trademark Search
When we researched lawyers’ needs around subscriptions and pricing last year, our study indicated that what a lot of lawyers with lower-volume needs really wanted was access to high-quality data in their choice of relevant countries, common law data in those countries, and simple, affordable, easy-to-figure-out pricing – as well as high speed and efficiency.
They didn’t want to be paying to see individual trademark search results or details within search results. They didn’t like to predict their search volumes in advance in order to secure a fixed amount of (relatively) low-cost searches for the coming year. And many, in fact, didn’t even want to have to talk to a salesperson (imagine that!).
What they wanted, in effect, was a shopping cart for professional trademark search – one with affordable prices and no games involved.
So, over the last year, we’ve built such a thing at www.trademarknow.com. Starting this week, it has two products on offer: Enhanced Knockout for US$13.99 per search, and AI Clearance for US$129.99 per search. You can buy seamlessly online any time you wish, in any currency, simply using a credit or debit card.
Both search products comprise multiple high-quality trademark databases, including common law companies and apps data. Both allow you to pay one simple amount for each search you run online – with full access to all the trademark details you find. Both include summaries of the trademark owners for each mark in your search results, too, showing you a handy dashboard of their portfolio size, product classes, filing history and geographic spread.
You can easily download receipts and usage reports for your purchases, if you need to bill these database charges to your clients. And while we don’t yet offer subscription packages online, we are working on them – please stay tuned.
Enhanced Knockout Search
Our Enhanced Knockout Search offers instant exact-match results across 5 country registries of your choice (out of 173 available countries, excluding China, which is currently only offered on our global subscription packages), plus the USPTO.
Relevant international marks (from WIPO, EUIPO, and ARIPO) are included automatically for countries in your search that are members of those organizations. Additionally, unregistered company and app names exactly matching your candidate are included for the five countries you choose, plus the USA.
Using our unique “finder bar” for filtering, sorting and searching-within-results, you can smoothly zoom into trademark threats within particular regions, product classes and date ranges, and then view details of existing marks and trademark-owners. Finally, you can share results via email or download your findings into reports.
All of this lets you quickly cover more databases in your screening search, eliminate weak mark candidates earlier, and avoid many high-cost comprehensive searches later.
AI Clearance Search
Our AI Clearance Search lets you access the same artificial intelligence engine that is helping to change the trademarks industry – which some of our clients report “has cut down on the total time needed to analyze trademark search results by 50 percent” (lawyers for IBM, our client since 2014, as quoted in the book Applied Artificial Intelligence by Marita Yao et al, 2018).
With this product, machine learning neural networks, natural language processing, and algorithmic scoring of name linguistics and product similarities find any close threats to your candidate across the countries you’ve chosen and raise the biggest ones to the top of your report – making your clearance job dramatically faster and easier.
You get your choice of 10 country registries (again, out of 173 available countries, excluding China, and including international databases as described above), and web and common law data (companies, apps, web search, complete domain-names search, and social media search) to safely find relevant similar trademarks to your candidate.
The same “finder bar” lets you drill into your results in various ways. And in addition, you can review elegant summaries of potential opponents’ portfolios, past oppositions cases, size and strength, as well as investigate the commonness of your candidate brand (and its component parts) within product types.
If you’re a trademark professional, we hope these new e-commerce offerings will give you another, lower-cost, higher-quality option for clearing your marks faster and more safely – one that gives you more flexibility in your trademark processes and enhances your team’s creativity. And as always, we welcome your feedback. Happy searching!