You select a good-looking trademark for your brand, market and sell products using that trademark, and just when your base of customers gets acquainted with the trademark – another company files a lawsuit against you, claiming the rights to your trademark. All too often, we see businesses launch brands with trademarks before accurately investigating the name. No brand owner wants to see a cease and desist notice demanding that they stop using their new brand or product name/logo.
Of all corporate IP assets, trademarks typically represent the largest shares of most leading companies’ IP portfolios. Filing trademark applications is cheap and easy (unlike patent applications). Introducing trademarks to the marketplace is also very easy. That’s why many companies oversee the crucial step of preserving the trademark’s value by conducting proper trademark searches. Bear in mind, trademark rights in the USA are settled on “first to use” bases.
That means businesses can claim rights to trademarks, even if they didn’t apply for trademark registration with the US Patent and Trademark Office. The companies that send cease and desist notices only have to prove that they’ve used the trademark before to go ahead with the litigation process. That’s why not conducting proper searches before launching new trademarks is extremely risky, with the biggest risk being expensive infringement lawsuits.
The Risks of Applying for Trademarks Without Conducting Searches
Trademark searches are vital milestones that companies have to cross to rightly own a trademark. Broadly, there are three major risks of not properly conducting trademark searches –
Infringements of an Existing Trademark
In August 1949, Adi Dassler, the founder of Adidas, registered the brand’s famous three-stripe logo. In 2014, the sportswear company established a new trademark for the logo, claiming that other brands can’t use the iconic three parallel equidistant stripes logo. In 2016, a German sportswear manufacturing company called Shoe Branding Europe launched an attempt to annul the trademark.
The EU IPO granted this request. Adidas still has the chance to appeal the IPO’s decision. Before that, they’ll need to prove that any three-striped logo will immediately get associated with the brand. Hence, shoe or clothing brands in the EU are technically free to use three-striped designs in their logos. But, a rich company like Adidas will keep challenging brands that do so.
Brands that conduct proper trademark searches will know about these cases and other similar cases. Failing to be fully knowledgeable of potentially infringing trademarks diminished Shoe Branding Europe’s brand exclusivity. It also dragged the company into an unnecessary litigation battle with Adidas. Although they won the battle, big corporations like Adidas don’t like to lose gently.
Revocation of Existing Trademarks
Trademarks can get revoked if, prior to registration, companies fail to conduct comprehensive trademark searches. Pre-existing trademarks may come to light. Or other information about the brand name/logo in question may pop up. Consider the case of Odessa Sparkling Wine Company. In 2014, the Ukrainian wine company applied to register the “ODESSA” trademark with the Ukrainian Intellectual Property Institute.
A year later, the company was told that the verbal trademark of “ODESSA” was descriptive and indicated the city called Odesa in Ukraine. Since the company sold and manufactured products outside of Odesa, the trademark was deemed deceptive. Currently, the Odessa Sparkling Wine Company owns multiple registered trademarks featuring the word ODESSA only in Cyrillic characters. It doesn’t own the ODESSA verbal mark.
Before settling on the brand name ODESSA, the company should’ve conducted a proper search under the guidance of a trademark attorney. Then, their trademark filing strategy would’ve been much well-thought-out, and the company would’ve avoided its legal problems with the Ukrainian Intellectual Property Institute.
Refusal of Registration
Lastly, and most importantly, intellectual property agencies may straight-up refuse to process your application if there are any competing trademarks in existence that may dispute with yours. Trademark searches flag up these potential risks. They inform trademark applicants about significantly similar pre-existing registered/unregistered trademarks. These searches also enable corporations to stay wise to potential infringement risks. Even delaying trademark searches can be extremely risky. Potential infringement risks may arise at any stage of a trademark’s lifetime.
Conducting Trademark Searches
Once a company files a trademark application, it’ll be obliged to punctually respond to any investigations made by the Trademark Office. So, before moving forward with trademark applications, companies must invest in either of two definitive methods of trademark searching – in-house or external searching.
Using in-house teams to carry out trademark searches is not ideal as internal professionals usually lack the niche know-how that professional trademark searching experts possess. It’s fair to say that trademark searches conducted in-house are likelier to be incomprehensive and leave the trademark applicants susceptible to potential infringement risks.
Professional-grade US trademark search online experts use the most advanced searching tools. They discover any and every piece of information that may unduly influence their clients’ trademark portfolios. Their searching expertise and access to business databases and state registration offices make them the most reliable option.
