At a previous post we explain how to use TMView, a free and very useful tool for getting an initial idea of whether my brand or a similar one has already been registered by someone else before me.
However, TMView does not provide all the similar marks we need to know about (especially in terms of phonetic similarities), nor is it always easy to interpret the results.
The experts in intellectual property law, and especially the trademark attorneys, Not only do we have specific programs that perform more in-depth searches for similar trademarks than a person can do, but we also have the experience, knowledge, and tools to intuit when a previous similar trademark is truly problematic for my future application and when it is not.
In this article, we explain how we do the search reports prior to any launch and trademark registration applications. Let's go.
The trademark registration process “is the least of it.”.
We usually tell our potential clients that the trademark registration process “is the least of their worries.”.
Actually, Registering your trademark is extremely important. because it is what grants you exclusive rights to that name (if you have any questions about this, you can see our Frequently Asked Questions). But the procedure itself to fill out the application form and submit it to the registry office (Spanish Patent and Trademark Office, in Spain; EUIPO, in the EU) it is relatively simple. All you have to do is fill in the applicant's details, the trademark details, choose the classes of goods and services you want to cover (you can find more information about this at this post), pay the fee, and submit.
Easy, right?
Well, no. Because if you simply launch your brand on the market and submit the registration application without further ado, Without knowing which trademarks are already registered that may be similar to the one you want to protect, simply you're going blind. If there is a holder of a similar trademark who detects your application for registration and considers that your trademark is harmful to them, they may file an objection. In that case, the registry office will issue the suspension of proceedings and will give you time to respond. Sometimes the suspension can be avoided, but other times it cannot. If you are interested in the subject, you can read more about it at this other post, where we explain what to do if you have received a brand failure.
In fact, even if you do not encounter any opposition during the registration process, but there are similar trademarks registered before yours, this does not mean that you will not encounter problems in the future. We explain why. here. Launching a brand on the market that bears similarities to previously registered brands for similar products or services can be extremely problematic, to the point of potentially facing a (legal) claim for trademark infringement, in which the owner of the earlier trademark may demand not only that you cease using the trademark, but also compensation for damages (which generally ranges from a minimum of 11% of the turnover generated by the trademark in the five years prior to the lawsuit to a maximum of the total profit made during that period).
In short, know what What are the risks associated with the brand I want to launch on the market and register? It is key. Information is power, and anticipating potential conflicts and future costs will help me plan for brand protection.
Why these trademark search reports should have a price.
Producing this type of report is neither quick nor easy.. It is not something that is done automatically by a computer program (interpreting the results requires professional human assessment), nor is it something that, in our opinion, should be offered by any firm at no cost to the client.
Be wary of low-cost agencies that claim to offer free preliminary searches. These searches will probably not be very thorough, or the cost of them will be charged to you at a later stage. Nobody gives away something for nothing.
Prepare a trademark search report takes several hours of work, and many years of prior experience in cases, cases, and cases of brand conflicts.
Generally, Our business formula is as follows: (It's no secret): we include the preparation and delivery of the search report in the registration application fees, so that if the report is favorable and we apply for the trademark, the cost of the report is included in the total. We only charge for the report separately if we do not apply for the trademark (because the result of the report is unfavorable, or because some time passes without instructions from the client to apply for registration).
In addition, we try to be as flexible as possible to avoid billing the client for unfavorable reports. We usually have no problem doing a few quick searches for two or three brand options and preparing a full report on the one with the best prospects. That way, if a brand has very little chance of being registered, we can quickly rule it out and let the client know as soon as possible. However, it is important to bear in mind that the most important results usually come after spending several hours diving deep into the preparation of the full report.
What trademark search reports consist of.
In a trademark search report, we analyze two things.
First, if the trademark you want to register may infringe on any absolute prohibition of registration. That is, regardless of the existence of other earlier trademarks, the trademark itself is not registrable. For example, because it is not distinctive (I cannot claim to register the word “Bakery” to distinguish bread sales services); because it is misleading; or because it is contrary to public order or morality.
Second, once we have completed the analysis of absolute prohibitions, we make a thorough research on prior marks. These searches are an art form. They involve not only knowing how to use the right programs and spending several hours (it is common to find hundreds or even thousands of results), but also identifying which brands are the most problematic and, for each of them, what the potential risks are.
In general, there are several issues common to all reports that must be taken into account:
- Names tend to carry more weight than logos, because consumers usually refer to brands by name rather than by their graphic representation.
- The beginning of brands tends to carry more weight than the end, because consumers always read from left to right.
- Generic, descriptive, or vulgarized elements do not usually carry weight in the comparison.
- The owner of a trademark is required to use it for the products and services for which it was registered, in the manner in which it was registered, but proof of such use cannot be demanded until five years have elapsed since the publication of its registration. A very common strategy when an opposition is received against a trademark registered more than five years ago is to request proof of use from the opponent. If the opponent cannot provide such proof, the opposition lapses. We explain this in more detail in this post.
- Negotiating and signing coexistence agreements with owners of earlier trademarks is relatively common in this sector. This is something to bear in mind if we detect a similar trademark in the same class of goods and services but which, in practice, is used in a different sector to that of the client. Of course, reaching an agreement cannot be guaranteed.
For each of the results obtained, we rate the risk as high, medium o low.
Finally, we usually devote a final section of the report to conclusions and recommendations. Although we have found some similar brands, there may be measures that increase the chances of successful registration and reduce the risks of conflict with owners of earlier trademarks. For example, there are times when limiting the application to very specific products and services, or including a logo, can reduce the risk of opposition (or, if opposition is received, give us more arguments to defend the grant or to negotiate an agreement with the opponent).
In short, having this type of report prepared by a lawyer specializing in intellectual property or trademarks is simply essential before launching a brand on the market and submitting it for registration. It is a complex task that requires technical expertise. If you wish, you can contact us without any obligation at info@bamboo.legal. We will be delighted to help you.
