Busy In-House Trademark Professionals Are Most Dissatisfied With Their Current Research Process For Identifying Common Law Risks for Trademark Safety, According to New Survey
More than a third of in-house trademark teams conduct more than 50 trademark searches per year, according to a brand-new survey of U.S. in-house trademark professionals conducted by TrademarkNow, a Helsinki-based legal technology company. And, when those busy legal professionals were asked to identify their satisfaction with their current trademark search process, 59% of those surveyed expressed dissatisfaction with their process for identifying common law risks of unregistered trademarks in use.
TrademarkNow, a company founded by a distinctive combination of attorneys and computer scientists, constantly interacts with the trademark legal community; however, the company seeks to further its knowledge of the unique challenges faced by trademark attorneys through regular surveys.
In the latest TrademarkNow survey, when asked to rank the most important factors in conducting trademark name searches, trademark legal professionals ranked the top five factors as:
- Efficient Risk Identification; Quickly and easily identify / assess the risks of potential legal conflicts for my candidate name or tagline
- Product Similarity Safety; Don't overlook any registered trademarks within product classes similar to those of my candidate
- Name Similarity Safety; Don't overlook any registered trademark names / taglines that are linguistically similar to - or the same as - my mark
- Unregistered Trademark Safety; Don't overlook any similar trademarks that are NOT registered, but in use i.e., common law risks
- Reporting Efficiency; Quickly and easily report the overall risk picture for a candidate mark [or group of marks] to project stakeholders
However, after identifying the most important factors of trademark searches, when asked about their satisfaction with their current workflow around them, legal professionals indicated:
- 59% are dissatisfied with their ability to identify common law risks of unregistered trademarks using their current process.
- 52% are dissatisfied with reporting efficiency - quickly and easily reporting the overall risk picture for a candidate mark.
- And 41% are dissatisfied with their current process for identifying registered trademarks within product classes similar to those of their candidate.
"In-house trademark professionals stay very busy throughout the year, conducting research and trademark searches to clear and protect their company's brands" said Mikael Kolehmainen, TrademarkNow Co-founder and CEO. Our platform was designed to make their job easier, so it's important for us to stay closely in touch with the problems faced daily by trademark attorneys and understand where the pain lies that needs to be addressed. Surveys, such as this one, are one way we stay connected with trademark attorneys' daily workflows. The finding that is particularly compelling in this survey is the level of pain trademark professionals feel around determining the risk of unregistered trademarks in the trademark clearing process. The common law risk that a majority of lawyers identified as both important and frustrating in this survey mirrors what we're hearing from the market, and certainly points to an opportunity for innovation.
The TrademarkNow survey of in-house trademark attorneys surveyed 59 professionals at U.S. and Canadian companies and was conducted in April 2015. Forty-eight percent of the companies surveyed have $1 billion or more in annual revenue.