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Trademark searching: ensuring the availability of new brand names

16-05-2016

It takes time, resources and money to create and launch distinctive and effective brands. But how can you be sure that the brand you have chosen is really yours to use? What if it has been registered or is being used by another party already in such a way that it would conflict with your use? Trademark searching provides a quick and simple means to investigate the availability of your chosen brand in your field of business, anywhere in the world.

In most instances, trademark searching is an important first step in any trademark registration or brand launch strategy, as it enables companies to avoid adopting brands that infringe third-party trademark rights. The attempted registration of such names can be costly and time-consuming, as it will invariably result in the other party raising an opposition to the chosen mark – often after the new mark has been put into use, which can result in companies having to halt their production processes, recall their products, abort an ongoing advertising campaign, and then develop and launch a replacement brand at short notice.

In this internet age where ‘free’ information is at everyone's fingertips 24/7, it may be tempting to use an online search engine, such as Google, to conclude whether a trademark already ‘exists’. However, such an online search will not identify those marks that have already been registered, but not yet launched into a marketplace – or at least not yet in such a way that it comes up highly ranked in an online search. Only a detailed trademark search in official or purpose-built databases will be able to identify such potential conflicts.

Search engines are useful tools for searching to see if a trademark that is the same or similar to a chosen mark is already in use and, if so, where and for what products or activities, but it cannot help brand owners to really detect all potential obstacles and, therefore, such searches give, at best, a false sense of security.

Avoiding disputes
Trademark searching provides a quick and simple means to check the availability of a chosen mark before embarking on a potentially costly brand launch. A number of different trademark searches can be applied, depending on a company’s needs or market, but will typically fall into one of the following categories:

  • Identical trademark search: identifies marks or devices that are visually or phonetically identical;
  • Similar trademark search: identifies identical and confusingly similar marks;
  • Trademark search with opinion: includes an attorney's recommendation on the results of the identical or similar trademark search based on their consideration of the prior marks identified;
  • Index search: identifies companies with identical/similar names to the search terms;
  • In-use verification search: examines whether a third party with prior rights is using its trademark rights correctly, which may provide grounds to challenge a registration.

In addition, a trademark search can also examine a chosen mark for unintended meanings or associations (a linguistic search). This is of particular importance should a company be launching its product or brand in certain overseas countries where you could be caught out by linguistic differences. Find out more about trademark searching.

To find out more about trademark registration strategies, speak to your Novagraaf consultant or contact us.