The Minefield That is Trademark Clearance Searching

So much investment goes into launching a new product or service. From development to marketing to sales, project management teams must be continuously alive to any roadblocks (and there are guaranteed to be many).

In this cacophony of activity, intellectual property matters can quickly take a backseat. And, as unbelievable as it may seem, some companies, especially start-ups, go through the process of creating a mark which is a hit with focus groups, developing eye-catching packaging and sales material, then roll out the new product complete with press releases and advertising, without ever doing a trademark clearance search.

Failure to complete a domestic or international trademark clearance search or relying on one that has not been correctly completed can result in an expensive infringement case to defend, not to mention a ruinous re-branding exercise and reputational damage.

Manual trademark searches – a recipe for disaster?

All developed nations have their own trademark registers and will be governed by their own trademark laws. Theoretically, this means that a full trademark search needs to be conducted in every country in which there is an intention to use a proposed trademark.

A full search should include a review of the following:

  • Existing trademarks

  • Common law or unregistered trademarks

  • Expired trademarks

  • Pending trademark applications

  • Abandoned trademark applications

The most thorough method for assessing whether a proposed name is free to use is to instruct attorneys in each of the countries in which the mark is to be employed to conduct a full search and advise on the local legal position.

In reality, very few organisations would attempt to run an international trademark clearance search manually. The risks are simply too high as are the costs. For example, conducting full searches for the EU alone is likely to cost more than $40,000. Furthermore, trying to extract timely responses from Solicitors in several jurisdictions is likely to lead to hair-pulling frustration and product-launch delays. Finally, even the most experienced trademark attorneys will not be familiar with the correct terminology and translation of every nations IP policies and procedures.

The benefit of using trademark search tools

Using tools specifically designed for trademark searches allows attorneys to run a variety of searches and analyze the results accurately.   

Depending on the time-restrictions imposed by the client, a trademark attorney can run a ‘knockout’ search or a comprehensive trademark search to check for identical or similar trademarks. There are tools available to complete both types swiftly and accurately.

Knockout search

A knockout search is a quick search for identical or nearly identical names in the U.S. Patent and Trademark Office’s (PTO) database and on the Internet. It quickly identifies any immediate obstacles in the way of registering a particular mark.

Due to time pressures, clients are often keen to base their decision solely on the results of a knockout search. However, knockout trademark searches are limited. They only pick up identical or near identical references; therefore, there is a high risk that conflicting names will be missed. Also, a knockout search will not pick up on unregistered trademarks based on ‘common law’ rights. 

Comprehensive trademark search

Running a comprehensive trademark search is the best way to mitigate a client’s risk when moving forward with a particular mark. As well as providing a detailed review of PTO filings and the Internet, the comprehensive search includes a review of various proprietary business databases, state registrations, and domain name registrations.

Investing in the right tools to run either a knockout search or a comprehensive trademark search effectively produces the following payoffs:

  • your final opinion will be backed up by sound evidence, thus mitigating your risk of a lawsuit being filed for negligent advice

  • you will gain a reputation for performing accurate and timely trademark searches

  • because most of the process is automated, junior staff can manage all but the final review, freeing up senior attorneys to concentrate on other projects

Ensuring the right tools are employed for trademark searching benefits both attorneys and businesses  because both parties can be confident in the final opinion produced. Given the investment required to launch a new product or company in the digital age, when it comes to accurate trademark searches, the adage, “an ounce of prevention is worth a pound of cure”, applies perfectly.

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by Judith Soto.