If you are looking to run a trademark search prior to registration of your new trademark then here are some things to remember when it comes to resources for your research.
Trademark search database
It is firstly important to determine which databases you will be using to conduct your search. Your chosen database can be determined by factors such as the territory or territories of registration, the kind of marks you are searching for and what results you expect to achieve from the search.
All businesses have access to free-to-use national IP databases for running their trademark search, however often these alone are not enough to run a search of the integrity necessary to register a new trademark.
Outside of these free national IP databases, there are commercial databases for conducting trademark searches, which charge a fee to use. These commercial databases offer a wider range of services than their national counterparts, and are far more useful to a successful trademark search.
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Commercial trademark databases will be able to run searches of marks to ensure that your trademark has the best chances at success. However, despite their ease of use, many businesses do not use them, choosing instead to utilize the free services offered by national offices. However, the importance of these comprehensive searching tools cannot be overstated and should always be considered to ensure that your trademark search is as thorough as possible.
However, the vast majority of businesses find these databases difficult to navigate, and end up making mistakes with their research. It is therefore advised that you seek the assistance of external trademark searching specialists when looking to run a search.
These professionals will use all available databases, both national and commercial, scouring both registered and unregistered trademarks to ensure that no mark is missed in your search, as well as providing you with use of a multitude of databases for one fee. It can, therefore, prove cost-effective to hire external professionals to use these databases on a one-off basis if you do not already have access to or knowledge of these resources.
More than the trademark search database
Aside from the database options available, the next important resource when conducting a trademark search is people – hiring the right people to conduct your trademark search can have a significant impact on the search results and the consequential success of your trademark.
Although many businesses have an internal legal department, few have one large enough to be able to exercise full-scale trademark searches without hampering the overall work output of the department. If you are looking to conduct a trademark search yourself, it is imperative that you have enough professionals within your legal department so as to cover for the slack which will be left by these searches.
Conducting trademark searches can prove challenging and may take some time to complete. It is therefore important, if you are tasking your internal legal department with conducting them, that the department is large enough so as to avoid falling behind on other work whilst members are engrossed in trademark searches.
Moreover, if you are searching for a trademark by name or keyword, then it is imperative that you remain aware of national variations in both culture and spelling, both phonetically and linguistically, as well as translations and national variations of the names of trademarks – especially if your IP portfolio extends to multiple territories.
It is therefore imperative that the people conducting your trademark search have access to or knowledge of all possible national variations of the mark you wish to register. Ideally, it is best to ensure that your team is international, as this will not only ensure that they are aware of linguistic differences but also social differences, which can be particularly important in the IP market.
Very few businesses, however, have such a large international team to hand. Although trademark searches can be conducted with small, in-house legal departments, searches conducted by international service providers are far more comprehensive.
Additionally, you must ensure that you have alternative proposed trademarks ready in case your initial proposal is not available. Your legal department, or external counsels, will need to have formulated multiple alternative trademarks, as the vast majority of businesses find that their first choice for a trademark is not the most viable one.
In summary, for a successful trademark search, you must have access to key databases and sufficient and appropriate manpower in terms of both time and skills. However, given the complexity involved in trademark searches and the difficulty in acquiring these necessary resources, it is often preferable for many businesses to outsource their trademark searches to external providers.
