Trademark searches are a necessary part of owning and registering new trademarks which many companies choose to put off, viewing them as unduly onerous to complete.
Choosing to put off a trademark search can have potentially serious ramifications, both with regard to the registration of new marks and policing existing marks. A brief exploration of these risks should be first considered in order to drive home the importance of conducting your trademark searches as soon as the need arises.
Trademark search risks
As trademark searches are a key aspect of all stages of owning a mark, the risks associated with not conducting these searches crop up at each key stage. In brief, the three main risks of not properly conducting a trademark search are the refusal of registration of a new mark, infringements of your existing mark or potential revocation of an existing mark.
If you are looking to register a new mark, trademark searches will flag up whether there are any competing marks already in existence which may conflict with yours. A failure to properly conduct a search at this stage could mean that you are unaware of a significantly similar pre-existing registered trademark, thereby rendering the registration of your mark refused.
Searches are also necessary during the term of any existing registered trademarks so as to remain wise to potential infringements in the form of vastly similar marks. A failure to properly conduct a trademark search with regard to policing your existing marks could mean that potentially infringing competing marks slip through the net.
Failing to be fully aware of potentially infringing competing marks will not only diminish your brands exclusivity, but can also significantly affect the financial and commercial success of your brand.
Revocation can also be a consequence of a failure to comprehensively conduct a trademark search. If, prior to registration, a trademark search was improperly conducted or not conducted at all and your mark was registered as a result, it may be liable to be latterly revoked if the existence of the earlier pre-existing mark comes to light.
The risks of a delayed trademark search can therefore arise at any stage during the lifetime of a trademark, these searches should thus be conducted as soon as necessary. There are different methods to conducting a trademark search, broken down into two definitive methods – in-house and external searching.
How to conduct a trademark search
Using your own in-house team to conduct trademark searches when necessary may ostensibly appear cheaper than hiring external professionals, however this initial cost saving may prove far costlier further down the line.
Internal professionals often lack the niche expertise possessed by external trademark searching service providers, meaning that many searches conducted in-house are likely to be less comprehensive and therefore leave your mark open to risks.
In addition, internal teams will often not be employed solely to conduct trademark searches, they are very likely to be members of your in-house IP department or company employees. Tasking in-house teams with conducting a trademark search, therefore, may also mean that these searches may take longer, as the employees will also have other ongoing tasks.
Therefore, although using an in-house department to conduct your trademark searches may appear to embody a cost saving, in reality this may not be the truth. However, smaller companies with trademarks and brand identity limited to one territory may benefit from bringing their trademark searches in-house, as these searches are far less complex than ones conducted on a larger scale.
Comparatively, external trademark searching service providers will have a full working knowledge of the methods required and tasking them with doing so will not unduly influence the other ongoing aspects of your IP. Choosing to have external service providers conduct your trademark searches can also leave you with the peace of mind that your search is being comprehensively conducted by professionals with searching expertise.
External service providers are particularly of use to companies with international influence, as the searches necessary for international marks can be especially onerous and complex.
Regardless of whether you choose to use internal or external professionals to conduct your trademark search, it is important to remember to complete them regularly and promptly – don’t put off tomorrow something which should be done today.