If we had to describe the trademark search and registration process in one word, that would be it.
Like other bureaucratic processes, trademarking involves many hairsplitting steps to approval: Filling out paperwork, waiting on rounds of evaluations, and potentially dealing with cumbersome oppositions. It's enough to make any applicant's head spin.
Unfortunately, there isn't much you can do to cut through the red tape outside of overhauling the entire trademark system, which you probably don't have time for. But you can significantly reduce unnecessary costs and time spent by streamlining the search process.
In this article, we'll reveal how to do exactly that, along with how to avoid the pitfalls of making decisions with incomplete data.
Attorneys Aren't Searching Registered Trademarks
Attorneys aren't searching registered trademarks thoroughly enough. Every year, thousands of businesses apply for trademarks. And every year, a significant number of those businesses end up in hot water due to pursuing high-risk marks.
Interestingly, this often has nothing to do with negligence and everything to do with incomplete data. So, how does this happen? How does a business that employs legal assistance during the registration process EVER end up in opposition? Or become the recipient of one of those lovely cease and desist letters?
The fact is, most of the attorneys acting on behalf of these clients were diligently researching potential risks. The problem wasn't the person doing the job, but the tools being used.
Databases Provide Incomplete Pictures
Today's trademark attorneys face a unique challenge. Not only has the global economy overwhelmingly increased competition, but it's also blurred economic boundaries like never before. Case in point: Very few businesses today limit the sale of goods and services to their immediate economies.
With such globalization, it is now imperative to thoroughly search international jurisdictions to protect oneself against trademark infringement. Limiting research to domestic searches within the United States Patent and Trademark Office, or a similar database in one's home country, is not enough.
For most attorneys, the process of searching registered trademarks (both locally and abroad) involves manually culling through multiple databases—USPTO's TESS, WIPO and/or EUIPO. Though both open source and legacy databases provide an abundance of information, they are sorely lacking in organization.
Filling In The Gaps
So, the question becomes: Even if someone has all the information they need, how effectively are they able to analyze it for context? Traditional trademark search results yield hundreds of pages of data. An effective risk assessment looks beyond exact matches to review:
- Historical trademark cases within a certain jurisdiction(s)
- A mark holder's history of litigation
- Similarity of distribution channels
- Similarity of products
Obviously, unifying the above information into a thorough assessment is extremely labor intensive. Despite the availability of such information online, the process of organizing it is surprisingly rotary. Assessors may as well be cutting and pasting paper from hardbound journals!
The Real Cost of Incomplete Data
Not only do traditional trademark search methods increase the likelihood of oversights, but they also lead to increased costs, both upfront and hidden. Since many legacy trademark systems charge on a per-search basis, searching one mark across multiple regions can easily cost upwards of $10,000. If that search must go worldwide, the price can be as astounding as $40,000, each and every time.
But the real cost of moving forward with incomplete data lies in potentially being challenged by a similar trademark candidate, which can ultimately lead to the costs of rebranding and/or litigation.
How much does a trademark case actually cost? Litigation costs generally fall into three phases:
- (1) Initiating the action,
- (2) Proceeding with the case, and
- (3) Appeal, whether as the winning or losing party.
Statistics show most litigation is resolved prior to trial (and even after trial to avoid the expense of appeal). But in a realistic trademark claim, you can expect to pay $100,000 or more. Total costs, depending upon how vigorously the matter is defended or appealed, can be in the millions.
Branding can cost anywhere from a few thousand dollars up to multiple millions for larger corporations. Logos, signage, labels, merchandise, and websites will all need to be reformatted.
Thus, even if your organization settles before trial, you will still be responsible for absorbing the cost of rebranding your product, service, or namesake.
The Solution: Searching Registered Trademarks
The solution is searching registered trademarks with artificial intelligence technology.