Trademark Searches: A Cost Saving Measure Often Ignored – Part 2
Crystal Broughan, Intellectual Property Attorney Apr 12, 2018 in Intellectual Property
When companies set out to establish a new brand for their company, they often skip one important step: the trademark search. This may save a little money in the short-term… only to cause much larger expenses and problems in the long-term.
In my previous blog post, I discussed why trademark searches are so important. Here I’ll talk about how to budget for your search.
Budget Considerations and Types of Searches
When creating a new brand, the company needs to budget sufficient funds to conduct a proper trademark search. When determining how much should be spent on a trademark search, a company needs to balance the cost of search with the risks of not searching.
Sometimes it is wise to bring in the finance department to assess the risk based on long term use versus the temporary use of a mark (seasonal). There needs to be a discussion on the importance of the mark to the company’s business and if a word mark search is sufficient or if a logo search also necessary.
Preliminary searches of Federal and State Trademarks are usually conducted in-house or by the company’s trademark counsel. A preliminary search includes government data bases, proprietary databases, and the internet.
Comprehensive searches in the United States are typically conducted by an outside vendor. The search will include Federal applications and registrations, State registrations, multiple internet search engine searches, domain name searches, and comprehensive searches in other countries. The comprehensive search will include searches by different classes (i.e. Class 25 for clothing, Class 30 coffee, Class 11 Coffee roasters, Class 21 coffee mugs, Class 43 coffee shops). A formal report is presented that includes the types of searches conducted, results of each search, and a recommendation.
An effective search and clearance of a trademark is at the heart of a brand development strategy. Spending money up front on a comprehensive search may help prevent a company from spending thousands of dollars on a new brand and then having to change their entire brand strategy because another company is already using the trademark and has priority in the marketplace.Share