3 Insider Tips for Accelerating Trademark Clearance Searches

Nick Potts,

No one has time for a lengthy trademark clearance search process.

In fact, many new businesses begin using their intellectual property long before thoroughly delving into the safety of their trademark. For some companies, this practice ends up segueing perfectly into their business plan, and they eventually find out they are safe to use the trademark. For others, not knowing if a trademark is safe to use, ends in disaster.

If your company will be registering a mark at some point, why delay the clearance process?

Typically companies wait for three reasons:

  1. Out of sight; out of mind (until it becomes pertinent, they don't want to think about it).
  2. It's expensive (you know you need to apply, but your budget may be strained).
  3. It's time-consuming (most businesses have more pressing tasks than sifting through mountains of data).

The good news?

Technology is changing the way we do business, making the trademark clearance process easier than ever before. In this article, we'll reveal our best tips for accelerating that process. 

3 Insider Tips for Accelerating Trademark Clearance Searches

Before we begin, let's define the term trademark clearance search:

The trademark clearance search is review of common law (unregistered) trademarks, pending and abandoned trademark applications, and existing and expired trademarks to determine if there are any potential roadblocks to successfully registering your trademark with the United States Patent and Trademark Office (USPTO).

The goals are simple:

  1. Avoid registering a mark that might generate a high "likelihood of confusion" with a brand already in existence
  2. Avoid getting sued for trademark infringement.

3 Ways to Accelerate the Trademark Clearance Process

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1. Know What You're Looking For

The best way to save time when performing a trademark search is to get organized. Fail to take stock of what you're actually looking for, and you might find yourself distracted by less-important tasks.

Most attorneys find it helpful to keep a running checklist of everything being evaluated. Whether you keep it in a spreadsheet or some other format is up to you.

Here's what your checklist should include:

  • National, state and international trademark registries as applicable
  • Company name databases
  • Competitor websites
  • Industry-specific government regulators (e.g. pharmaceutical and medical devices)
  • Industry-specific websites and news sources
  • e-commerce platforms
  • App stores
  • International dictionaries (to assess potentially offensive word meanings in other languages)
  • Internet domain registries
  • Social media platforms

 

That's a pretty long list—check those boxes off the traditional way, and you will be running from database to database in search of the information you need. Keeping up with so many moving pieces can begin to feel draining after awhile. Which leads us to technology...

2. Leverage New Technology

Do things the modern way, and you won't have to visit nearly as many separate sites, resources, or databases.

What exactly is "the modern way?"

It's using technology to your advantage—doing in seconds or minutes what would have taken hours or weeks. With NameCheck, for example, you can evaluate many of the items on your checklist without having to scour a frustrating number of individual sources.

The software uses a complex algorithm to pull the information you need from many of the pertinent sources. Things like word linguistics, product types, app store usage, and global jurisdictions are all evaluated simultaneously.

Will you still have to check things like common law sources? Yes, but you'll dramatically reduce your workload by getting much of what you need from one source.

3. Eliminate Extraneous Sifting

Undoubtedly, the most time-consuming aspect of the search clearance process is sifting through all the data of similar marks. NameCheck also helps with this aspect.

Not only does it reduce the number of sources that need be consulted, it also analyzes the results. Legacy providers can’t provide the results of NameCheck without the assistance of actual human brain power and sometimes weeks of research.

Safety Level Meter

Being technology-assisted can cut those 80+ page reports down to only a few marks in a matter of seconds. Which means you spend your time reviewing relevant search results instead of sifting through stacks of irrelevant junk data.

How Are Rankings Determined?

NameCheck's search assessments are based on a complex algorithm, which simulates a likelihood of confusion analysis, ranking results in order of threat level, according to similarity of name, goods, and services.

The Safety level meter combines a threat level with case law precedent of trademarks with similar risk factors to give you an overall score. Risk mitigation tools will alert you to linguistic risks and litigiousness of those owning similar trademarks

During our independent studies, we've actually found the program's results to be more reliable than traditional human analysis. NameCheck is based on 12 years of trademark law modeling research conducted and constructed by some of the brightest minds in the business.

While software will never replace the experience, knowledge, and insight of a legal professional; it can add additional layers of protection, while dramatically reducing the amount of time required to conduct a search assessment.

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