Trademark searches are an integral part of trademark ownership, yet many companies fail to carry these out routinely or comprehensively. Although you may be aware of the importance of conducting a trademark search, you may not be fully conscious of the intricacies surrounding how these should be conducted or the key times at which they are required.
A full understanding of the context surrounding trademark searches can only serve to improve the protection and exclusivity of your brand.
This page, therefore, will provide you with a full rundown of what a trademark search actually involves, when they are needed, why they must be conducted promptly and the means by which you can go about conducting your trademark search.
Although it may ostensibly appear straightforward, a trademark search is actually a far broader term than many realise.
Trademark searches can not only search databases for the existence and use of registered trademarks, but they can also be used to return results on unregistered brands. These searches can be conducted by territory or on an international scale to show you the marks which are being used in relation to your search terms.
Trademark searches are not limited to using merely keywords as search terms, either, as searches may also be conducted by trademark number, image or owner.
Trademark searches, therefore, are not merely online searches of a registered trademark – they can be used for much more.
A trademark search is important at many different stages during the term of your trademark, and should not be viewed as only being of importance as a preliminary search prior to registration of a new mark. Of course, this purpose is key, however, trademark searches can also be of use during the term of your mark so as to be wise to potential infringements, as well as to be protected against potential revocation of your mark.
Preliminary research prior to the registration of a new trademark is the first time during the lifetime of a mark when a trademark search is useful. As previously mentioned, you can search databases to discover if there are any pre-registered marks significantly similar to your own which may lead to the refusal of your mark’s registration.
This is potentially the most important stage at which a search must be conducted, as a failure to properly search existing trademarks may mean that, once you have filed for registration of your new mark, it may be refused altogether. This evidently poses a significant waste of time and resources for your business.
In similar vein, an improperly conducted trademark search at this initial stage could mean that your latterly registered trademark is liable for revocation if the existence of a similar pre-existing mark comes to light. Again, this would mean a significant amount of time and resources had been spent on registering and protection a registered trademark which was then revoked.
After this initial stage, however, searches are still useful and may still be needed. Intermittent searches may be beneficial so as to remain wise to possible infringements of your mark or threats to the exclusivity of your brand. A trademark search during the term of your mark may show that there is a significantly similar mark being used, either as a registered trademark or otherwise, which may amount to a potential infringement.
As we have explored, a failure to carry out a comprehensive trademark search at any of these key stages could prove disastrous for your trademark. Not only could this result in an inability to protect your mark as a registered trademark, but it may lead to the diminution of your brand’s overall success.
A failure to successfully conduct a trademark search at the initial preliminary research stage may mean that your company files to register a trademark which is then refused because of a pre-existing mark not flagged up by your search.
Searches may also be sought during the term of your mark in case of competitor’s marks infringing upon your own. A lack of awareness surrounding these infringements could hamper the exclusivity and value of your mark.
All of the above consequences of a failure to conduct a comprehensive search represent a significant and unnecessary drain on resources.
It is not only important to remember to conduct a trademark search when needed, but also to ensure that these searches are carried out comprehensively by professionals. An improperly conducted trademark search is no better than a non-existent search, and a far greater drain on resources!
When it comes to conducting your trademark searches you have, broadly, two options: you can either conduct these searches in-house, or expedite it to an external service provider.
Many companies initially think to conduct trademark searches in-house, surmising that the process will not be unduly challenging and will save them the money from hiring external experts.
This method can be particularly beneficial to smaller companies with limited trademark reach – companies, perhaps who only have a small intellectual property portfolio and registered in one locality of the same territory. For companies in this circumstance, choosing to conduct your trademark searches in-house will probably prove beneficial.
As these searches are unlikely to be particularly in-depth or challenging, the risks that they will be conducted improperly are reduced. However, it is important to bear in mind that, even when these searches are comparatively simple, there still remains room for error.
When conducting a trademark search in-house, therefore, it is important to consider which database best suits your needs. Many national IP offices have their own online databases, easily discoverable online, in which these searches can be conducted. For the majority of businesses, this is the first port of call when conducting an in-house trademark search.
The benefit of using these national databases largely comes in the form of a cost saving – as these services are free of charge. The drawbacks, however, are that these databases will only return results within select territories, and only registered trademarks.
There are some additional IP office databases, such as that provided by WIPO, for searching marks which are registered in multiple territories, however this additional dimension to the search can often complicate it further.
Searches on these online databases can be conducted via name or keyword, or sometimes by trademark number, image or owner. If choosing to conduct these trademark searches yourself, it is important to remain aware of linguistic, phonetic and national variations on spelling of any search terms, as these may affect the outcome.
As previously mentioned, however, these national databases will only return select results – namely, those trademarks registered within the relevant territory matching the express search criteria. Often, such searches are not enough, and many potentially significant competing marks will slip through the net using these national databases.
In addition to these national databases, other commercial databases can be found online, however these are not all free of charge. Databases such as CompuMark will be able to provide you with an availability report for your proposed trademark, as well as offering basic searching services in line with national databases.
Acting as a halfway house between national database searches and hiring external service providers, these commercial databases are able to provide more comprehensive results than the free services provided by national databases, however, they are similarly dependent upon the search terms used.
Some businesses, therefore, prefer to hire external service providers to conduct their trademark searches, as searches can be onerous tasks and may divert the attention of your in-house team away from their other responsibilities. In addition, many businesses seek comfort in the peace of mind that accompanies the outsourcing of these searches to independent experts.
For many businesses, navigating the minefield of trademark searches opens up the possibility of unnecessary risks, and so they choose to hire external service providers to conduct their searches for them.
Hiring external trademark searching experts not only has the benefit of saving you the time involved in conducting these searches yourself, but it is also likely to mean that the searches are far more comprehensive than if conducted in-house.
External searching service providers do not suffer from the many issues associated with having your searching conducted internally – firstly, external providers often comprise international teams, therefore an awareness of national variations affecting your trademark are second nature to them.
External agents also have years of experience in conducting searches and are likely to be far more knowledgeable and successful than your internal team who, despite their skill as a legal department, are not trademark searching specialists. Moreover, external specialists have more resources to hand than your in-house team – they are not limited to merely searching national databases for registered trademarks, but have access to additional databases and can search unregistered marks and domains.
In addition to scouring the aforementioned national and commercial trademark databases, service providers will also be able to offer additional screening services tailored specifically to your business needs. These services will highlight to you both the legal and commercial ramifications of registering your mark, therefore providing you with complete foresight into the effects and success of your registration.
Choosing this complete package ensures that you have complete clarity as to where you and your mark stands in relation to the rest of the market – an insight which is invaluable in the IP sector.