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Trademark searches are a necessary part of registering and owning trademarks, but many companies choose to put off trademark searching, viewing it as unduly complex or onerous. Discover why searching for a trademark is important before and after registration and the risks of not conducting a trademark search in our latest guide.
Choosing to put off a trademark search can have potentially serious ramifications for both the registration of new marks and the ability to police existing marks. Exploring the risk of not searching for a trademark at the appropriate time can reinforce the importance of conducting such searches as soon as the need arises.
Trademark Search Risk—and Reward
As trademark searches are a key aspect of all stages of owning a mark, the risks associated with not conducting these searches can occur at any point during the trademark lifecycle. However, the three main risks of not properly conducting a trademark search are: refusal of a trademark application, infringement of a registered mark, or potential revocation of an existing mark.
Trademark risk 1
If you are looking to register a new brand name, trademark searches will flag up whether there are any competing marks already in existence that may conflict with your chosen name. A failure to properly conduct a search at this stage could mean that you are unaware of a significantly similar pre-existing registered trademark, which may block or impede the registration of your mark.
Trademark risk 2
Searching for a trademark is also necessary during the term of any existing registered trademarks to ensure you are informed of any third-party registrations that potentially infringe your marks. A failure to properly conduct a trademark search when 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 brand's exclusivity but can also significantly affect the financial and commercial success of your brand.
Trademark risk 3
Revocation can also be a consequence of a failure to comprehensively conduct trademark searches. If a search was not conducted properly (or at all), your registered mark could be revoked if the existence of the earlier pre-existing mark comes to light.
As the risks of a delayed trademark search can arise at any stage during the lifetime of a trademark, searches should be conducted as soon as necessary. However, there are different methods for conducting a trademark search, depending on whether you prefer to run trademark searches in-house or via an external partner.
How to Conduct a Trademark Search
Using your own in-house team to conduct trademark searches may be the best option if you have a dedicated team of trademark search professionals in-house with access to an advanced trademark search platform, such as Markify.
If you do not have dedicated resources in-house, working with an external specialist can help you avoid the risk of incomplete or improper searches. External trademark searching service providers, such as Questel, have unrivalled expertise running trademark searches, as well as access to the most comprehensive databases and cutting-edge tools.
Choosing to have external service providers conduct your trademark searches can save you time and free up your internal team, while providing peace of mind that your search is being conducted comprehensively by professionals with searching expertise. This is particularly important for international trademark search projects, which can be especially onerous and complex.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
