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.
With the exception of those who proceed directly to use or registration without any clearance as a strategy (not recommended for the faint of heart or shallow of pocket!), for most, that process will begin with a preliminary trademark search. These are also known as ‘knockout’ or ‘screening’ searches. The crux of the issue is shortening a list of new brand name ideas by eliminating those with obvious roadblocks right at the start so that you are not putting time or money into non-starters.
There is no definitive guide as to the likely number of names required to find at least one candidate worth examining more closely but an estimate might place it somewhere within a range of 10:1 up to 300:1 depending on the industry you operate in and how ‘congested’ that market might be. The quality of the names chosen is also a significant factor with those more experienced in naming projects leaning towards more fanciful and distinctive names as a matter of course. Such names tend to have a higher strike rate in terms of availability for use.
What is a preliminary trademark search?
What a preliminary trademark search consists of is something that is defined differently by many people. For most and at a bare minimum, it involves checking the data at your domestic Intellectual Property Office (IPO) and then doing a google search for the exact name that you have come up with. If you have additional regions that are a regular part of your sales strategy, you might also check the relevant IPOs.
It is also helpful to be clear at the outset exactly what products or services this name is intended for as this is a highly relevant piece of information in deciding whether any results you find are a concern or not. Even an exact match for a wildly different product or service may not necessarily prevent use or registration depending on a number of factors. Others may go a step further and check any obvious variations on the name - trademarks for you vs trademarks 4 you for example.
Speed and efficiency are the key issues:
It should be remembered that the essence of preliminary or knockout searching is speed and efficiency. You don’t want to miss names which could be potentially viable but equally it is less than ideal to get bogged down and spend time or resources on names which have no realistic potential in this early stage.
With more modern searching tools, the preliminary trademark search itself can be broken into steps, particularly where there is a long list of names to contend with. In the first pass, you might simply run the list of names through an intuitive and instantaneous exact match search to cross off the ones with an obvious issue. The benefits of an instant search with clearly understandable results means that many are now choosing to incorporate this step directly into their brainstorming activities. In this way, names that never had realistic potential are eliminated in real time, ensuring that no time is wasted at the outset.
While google searching is rather more time consuming, it is still an important next step in the process. In many countries, it is not necessary to have registered a trademark to acquire rights to a name. It is possible that rights can be acquired through use of the name and searching through Google or another internet search provider can throw up what is known as ‘common law use’ of the proposed name.
So, you haven’t found any concerning results. What’s next?
That will largely depend on your capacity, experience and comfort zone. For some, the next step will be to take their shortened list to their trademark attorney for further clearance and advice. Others will search further themselves. Sometimes this will consist of a full comprehensive trademark clearance or it may be more of a ‘halfway’ house between the two. How far your clearance process goes will depend on your business needs, industry and risk level. But starting your journey in the most efficient way possible will get you there faster!