Blog

Can you picture it? - the Marketing and Legal departments embarking on a new naming project in a perfectly symbiotic pas de deux. Marketing send forth their researched and frankly brilliant new product name, Legal (or Outside Counsel) clear it for use and register it as a trademark in plenty of time for Marketing to design their packaging and message around it.

Sadly, it almost never seems to work that way!

Friends, Romans and…erm….trademark attorneys, lend me your ears.

There are few things in life that interest me as much as observing the practice of law. I love the ‘certain uncertainty’ of it. The precise nature of enquiry combined with measured (or sometimes not so measured!) subjectivity. It is predictably unpredictable and expressed in stilted archaic language often sadly incomprehensible to those on the receiving end of its tender judgement.

Trademark exclusivity which is enabled by registration, is territorial. Thus companies need to apply to each country one by one within the scope of their market strategies in order to protect their trademarks.

The holiday season is almost upon us and we take a quick look back through 10 of the most popular blogs of 2018:

There is a compelling reason why companies seek to protect their brands with trademark registrations - revenue. It takes significant investment in terms of resources to build a successful brand. Leveraging a return on that investment becomes critical.

Managing a large international trademark portfolio is no small endeavour. Aligning the necessary legal requirements with the product development and marketing teams for product launches. Clearance and registration across multiple regions, coordinating the efforts of foreign counsel as required. Orchestrating multiple renewals and filings across countries. Fighting against the rising tide of counterfeits and infringements. It’s no simple task.

The humble screening search is a key player in the creation of any trademark. From a law firm perspective, approaches to this are variable depending on client expertise, resources, industry and needs. In some cases, clients are encouraged to perform at least some part of this process themselves - at least to quickly check the Google search engine for any obvious results that will derail any future plans for the potential brand. In other cases, the ‘knockout’ can resemble more of a ‘deep screen’ where the relevant industry demands it. In yet other cases, trademark attorneys will perform a quick screening for conspicuous impediments as a low cost or complimentary service to clients.

No matter the region in which your business operates, the benefits of registering a trademark for your brand are myriad. However, unregistered use of brand names is still common and in some cases there are sound business reasons for so doing. In cases where your product is intended to have a short life cycle, for example, the costs and administrative efforts of applying to register a mark for a product which may no longer be in use by the time the registration process is complete, is not a viable prospect. In this example, clearance to ensure that you will not run into difficulties during the short life of your product is still to be strongly recommended.

There has been a lot of excitement around our new FREE preliminary trademark search tool which had its official launch on Monday, 24th September. But what does it do and how does it work? For those who have not yet signed up for their free account, we are taking a look inside the magic!

In the creation of a new brand, a robust clearance process is critical to ensure that your use of the brand will not be expensively challenged, whether you intend to register a trademark for that particular brand or not. However, clearance is not a one-stop-shop. There are several steps, elements and processes to consider depending on your business needs, goals and strategy.