We certainly understand budgets, but omitting the search before registration is penny-wise and pound foolish, in the words of my mother.
It takes an experienced search strategist to search for all the variations that might cause rejection due to “Confusingly Similar” or “Likelihood of Confusion”.
- Rejection can be based on phonetic similarities which may be spelled entirely differently: VIA / VILLA / VIYAH / VEEAW / FIA / FEEYA
- Rejection can be based on translation similarities, using entirely different words/phrases: MANNER / WAY / MANERA / MANIERE / METHOD
- Rejection can be based on word similarities: STREET / BOULEVARD / AVENUE / LANE / PASS
- Rejection can be based on similarities in coordinated class codes, not only in the exact class code: FOOD ITEMS FALL INTO BOTH 029 / 030 with an additional 6-10 class codes which should be considered in the search as well
Many countries have a free, on-line, searchable database. These generally return direct hits only, essentially identical matches to the term and class code you enter. This an excellent place to start your search, but should not take the place of a professionally performed search.
For example, a search in USA on “realtor” returns over 100 “live” trademarks. On the surface that looks good, “realtor” is considered by most to be a generic term for a one who sells real estate.
However, the trademark search revealed facts never expected…file a trademark application which includes the term “realtor” in the USA, and you’ll most likely find that application facing opposition before it is 30 days old. This is the kind of fact which would be difficult to ascertain from the free on-line search by a layman, but would be readily apparent in a search performed by a professional.
OTHER GOOD REASONS TO HAVE A PROFESSIONAL TRADEMARK SEARCH
- The trademark search can also provide good marketing information, such as similar (but not identical) brand names already out there, which might lead a trademark owner to consider modifying the name before launching an international sales campaign.
- Some country searches include common law matches as well; another good marketing tool. A brand can have common law rights even without formal trademark protection.
- A search can also, in some countries, provide additional insight on potential opposition. For example; some trademark owners aggressively use Trademark Watching to “police” their own trademarks and actively file oppositions. This information could be of use to the trademark owner when making a decision on whether “Likelihood of Confusion” exists. Few like to face the possibility of litigation (and litigation costs) when they have barely entered the marketplace.
- In some countries, reviewing dead trademarks, not only live trademarks, can provide insight on recent trademark office trends.
Excluding the trademark search performed by a professional is penny wise and pound foolish, and should not be omitted in an international expansion plan.