"Knowledge is power."
It's an encouraging euphemism spoken quite frequently.
Unfortunately, the phrase often contains an unspoken message: Certain knowledge is only made available to certain people, and that is how the few stay so powerful.
Evidence of this phenomena is seen in many facets of life. Though, in some cases, the difficulty in obtaining knowledge has been made intentional, this does not need to be the case with trademark search and registration processes. Especially, when it comes to compiling global trademark search results into accurate risk assessments.
Global Trademark Search — When DIY Is Best
More often than not in life, we don't know what we don't know because:
- We're not fully trained in whatever subject we seek more information about OR
- The appropriate technology and/or organizational systems that allow independent research does not yet exist.
Whether you are an attorney, a branding professional, or a CEO, it's likely that you have gaps in your global trademark knowledge. After all, no one person can reasonably be expected to achieve expertise in the trademark laws of all 195 countries.
The good news?
New technology is now closing the knowledge gap in global search. With the support of new technology-assisted software, in-house legal counsel can now be more KNOWLEDGABLE, more POWERFUL, and more SELF-RELIANT than ever before.
For the remainder of this post, we will look at how a company might go about crafting a global search strategy. We'll also compare traditional options against more modern ones and demonstrate when DIY software options make the most sense.
Conducting Your Global Search Campaign
1. Set Your Priorities
Before you can begin your global search, you'll need to assess company priorities.
Some relevant questions to ask might be:
- What is our budget for the global trademark search process?
- How many brand name iterations can we afford to put through the process?
- Which countries are most important to us in terms of present and future sales?
- How confident do we feel with our naming candidates (based on prescreening)?
- Do any of the countries we're looking at have exceedingly burdensome regulations?
2. Evaluate Available Search Methods
Once you've set your priorities, you're ready to choose your method of search. Until recently, companies were exclusively reliant on outsourcing global searches. Of course, that is changing with technology-assisted search (more on that in a moment).
Traditionally speaking, you have three global trademark search options:
- Contact local counsel in each of the countries you plan on trademarking within and hire them to conduct risk assessments on your behalf.
- Outsource to legacy providers who have contacts within the regions you need and ask them to conduct risk assessments on your behalf.
- Outsource to outside counsel within your home country and ask them to conduct the global search on your behalf.
While each of the above options carries its own benefits, all are exceedingly expensive. Which is why choosing the option that best matches your priorities is important.
3. Choose The Right One (or Combination)
While the ideal choice might be to directly partner with legal experts residing within your desired regions, doing so isn't always feasible.
Say your company is seeking trademark registration in 50 countries, can you really afford to hire 50 different lawyers?
Additionally, would you really want to organize findings from 50 different attorneys in 50 different formats?
This is why many companies turn to legacy options, like Clarivate and Corsearch. While these organizations have spent years building relationships with experts around the globe—experts who can answer the challenging questions that come up within an international search—they are also incredibly expensive.
The cost of conducting a comprehensive global search for ONE trademark with a legacy provider is around $40,000. If your company has a high degree of confidence and wants everything handled, going this route may be appropriate.
However, if your company does not have a high degree of confidence in its top choices (or simply, wants more control during the search process), technology-assisted software is your best bet.
The best part? Technology-assisted software is a fraction of the cost of legacy providers. Meaning, you can put that extra money toward obtaining local counsel in a high-priority country for added certainty.
4. Pay Attention to Details
As any attorney worth his salt knows, paying attention to the details is PARAMOUNT. As expected, the global trademark process adds additional layers of complexities. Keep these details in mind when conducting your next search:
Linguistic Checks: Does your trademark have a negative connotation or vulgar meaning in any of the countries you care about? Oddly, many of the vulgar meanings seem to happen in Spanish.
Updated Databases: Are you working with recent information? Some countries update their databases every day, while others only update theirs once a week. Moving forward with out-of-date information could result in astronomical prosecution and rebranding costs down the road.
Litigious Checks: Do owners of similar marks have a track record for filing oppositions? How large are these competitor companies? Do their brands reside in the same countries we're targeting?
Domain Checks: Is another company already using your candidate within their domain? If so, could you potentially buy them out? How much will that cost?
Product Type Checks: Have we searched by product type in addition to nice class? Avoid this step and your legal opinion may not be as accurate as possible.
Choosing Technology-Assisted Software
TrademarkNow combines the accuracy of traditional legacy providers with the DIY nature of traditional online databases into a user-friendly platform. Powered by a unique algorithm, TrademarkNow allows companies to conduct global search campaigns within seconds.