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Topics: Trademark Searching, Law Firm, Corporation

How to optimize your legal department’s work thanks to external trademark searches

If you are still conducting trademark searches in house, then you are probably wasting both your legal department’s time and resources. Not only can outsourcing this task potentially save your business money, but it, rather importantly, improves the efficiency of your department as well as of the searches themselves.


Although many businesses may prefer to keep such tasks ‘closer to home’ with their own legal department, doing this can actually be counterproductive and even disastrous for your IP portfolio. 

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In order to understand best how to optimize the efficiency of your legal department in this regard, it is important to first understand how tasking them with conducting trademark searches is initially inefficient.

 

Why is it inefficient to have your legal department conduct trademark searches?

The most glaring error in tasking your legal department with conducting trademark searches is that it detracts their focus from other important tasks. Put plainly, your legal department exists for a reason, namely, the protection and evolution of your intellectual property, and tasking them with something as potentially onerous as a trademark search significantly hampers their fulfilment of this role.

Moreover, trademark searches can occupy a substantial amount of time, particularly for larger companies, or businesses with a larger or international IP portfolio. Having your legal department conduct these searches may detract their attention from more pressing legal matters for a concerningly long time.

In addition, having your legal department conduct trademark searches is also inefficient with regard to the quality of the searches themselves – your legal department may not have the requisite expertise to conduct these searches as comprehensively as is needed. For example, they may not search the relevant databases or take note of the uses of marks which are flagged up by their search, both of which could make the search itself redundant.

An incomprehensive trademark search can prove disastrous for your trademark, with potential ramifications such as refusal of registration or revocation. If your legal department does not complete a trademark search fully comprehensively, then they have not only wasted time, but may have caused significant damage to your portfolio.

In a similar vein, internal legal departments may also struggle if you require trademark searches to be conducted on an international scale. Although not a particularly significant issue for smaller companies with limited IP reach (though here, too, an understanding of the international scale of the IP market may still be needed), companies with an international aspect to their portfolio will not benefit from their trademark searches being conducted solely by an internal legal department.

Often, these internal departments will be based solely in one territory – therefore the employees will only have a mindset tailored to this one territory. When conducting a trademark search, it is imperative to think on an international scale, as the search terms used in these searches may need to take account of the global nature of the IP market.

Taking into consideration factors such as variations on spelling, translations and linguistic and phonetic variations of search terms as well as cultural differences is the only way to ensure that your trademark search has been conducted comprehensively. Unfortunately, internal legal departments are unlikely to have an awareness of these important factors.

 

How can external trademark searches optimize your legal department?

As we have explored, tasking your internal legal department with conducting trademark searches can not only embody a waste of time and resources for them when they have other pressing tasks to be conducting, but it could also prove to be counterproductive for the searches themselves.

Hiring external service providers to conduct your trademark searches will not detract from the ongoing work of your legal department, therefore leaving them free to focus on the protection and ongoing growth of your portfolio.

In addition, external service providers have years of expertise and specific industry knowledge when it comes to conducting trademark searches – conducting these searches is their job, no-one can do it better!

With regard to the international nature of IP, external providers differ to your internal legal department in that they will either comprise of external counsels from different territories, or they will have an international network and possess an awareness of the impact that different territories may have on your trademark search. This awareness is key in the ever-expanding IP market.

 

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