The World Intellectual Property Organization reports that approximately 15.2 million trademark applications are filed annually[1]. Each year, the task of searching and clearing a new global brand becomes increasingly challenging as the number of trademarks in the market continues to grow.
The foundational work behind a new brand launch, particularly trademark screening and searching, is critical. However, if not conducted thoughtfully and in a systematic manner, trademark searches can become unnecessarily time-consuming and costly. So how do trademark professionals ensure they are setting themselves up for global success?
Key Considerations for Effective Global Trademark Clearance
We have outlined six practical strategies to streamline the trademark clearance process, ensuring that new brands are protected across multiple jurisdictions. Trademark attorneys, from newly qualified and trainees all the way to established professionals, will find this guide valuable as it provides in-depth insights into the intricacies of global trademark clearance.
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Plan, budget and buffer
To ensure the success of a brand launch, it is important to work backwards from the required launch date. Allocate sufficient time and budget for all necessary screening and searching to clear a name. It may sound simple, but planning is often as important as the search.
Understanding when and where help is needed before starting allows for proper allocation of suitable resources and technologies. Utilizing local expertise improves chances of success by offering a comprehensive view of local practices, languages and laws relevant to the new brand launch.
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Start with a large pool of potential candidates
Competition for a name that captures attention is high. During the clearance process, it is likely that one or several names will not be available for use. Considering that nearly half (48.3%) of all trademark applications filed with the United States Patent and Trademark Office (USPTO) are unsuccessful[2], it is important to remind relevant teams and stakeholders of the importance of creating a strong list of potential candidates to increase the chances of successfully clearing a new brand.
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Screen before searching
Often, screening is underutilized before a search, but it is important that major obstacles are identified before a search begins to ensure success. What difficulties have been encountered previously in the jurisdictions being searched? Are there identical marks that already exist?
It is also essential to check the availability of domain names and social media handles that may be relevant to any new brand. In the digital age, this step should not be overlooked. Regional nuances for social and domain handles should be considered at this screening stage to ensure potential trademark conflicts are not missed. Over 160 million domain names are now registered in the .com top-level domain (TLD), making it increasingly difficult to find an available domain name that exactly matches a new brand. It is important to check not only in .com but also in all the new generic TLDs (gTLDs) and country based TLDs (ccTLDs).
Screening before searching can be quick and inexpensive with the right online screening solution, ensuring a mark’s viability can be assessed before investing valuable resources into a full search. With technological advancements now allowing for both word and device marks to be screened, the process is more important than ever.
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Adopt a phased approach
Searching every market and across multiple Nice Classes is often not practical. However, risk can be balanced against time and cost constraints by identifying key jurisdictions and restricting searches to major markets and key Nice Classes.
As a first phase, it can help to search for shortlisted, preferred names in three or four key markets. In the next phase, searches can be conducted in additional markets for names that survive phase one.
Performing a high-quality trademark search is essential to avoid conflict that could delay market entry and incur expensive litigation fees.
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Utilize trademark organizations that allow multiple jurisdictional services
Screening and searching lead to trademark filing and at this stage of the process, it can be important to utilize organizations that allow multiple jurisdictional filings such as the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization’s (WIPO) Madrid System.
Using these multinational systems allows for obtaining trademark protection in a wide number of jurisdictions efficiently and cost-effectively, in tandem with national applications where needed.
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Post-filing considerations: lifecycle of a trademark
While it can be perceived that the process stops after a trademark is filed, this is not the case. It is important to remember the full lifecycle of a trademark to ensure trademarks are not put at risk. Remember the importance of maintenance and commercial exploitation stages post-filing alongside searching, filing and watching earlier on.
A trademark maintenance program is crucial for safeguarding intellectual property rights. Without proper maintenance, trademark registrations can be threatened leaving the brand vulnerable to infringement and loss of exclusivity. Timely renewals are integral, as well as addressing any legal challenges and updating the trademark’s status as needed. By adhering to these protocols, continuous protection of the trademark is ensured, maintaining its value and preventing costly legal disputes.
Plan, strategize and execute
Successfully clearing a new brand for global use requires meticulous planning, strategic execution and leveraging the right tools and expertise. By following the six practical strategies outlined in this guide, attorneys can navigate the complexities of trademark searching with greater confidence and efficiency.
How does Clarivate assist with trademark clearance?
Clarivate offers a variety of tools and resources designed to support newly qualified attorneys in learning about trademark lifecycles, as well as providing experienced attorneys with opportunities to refresh and expand their knowledge.
Leveraging the comprehensive suite of trademark solutions that Clarivate offers can significantly enhance the efficiency and accuracy of trademark searches, screenings and filings, ultimately safeguarding IP brands on a global scale.
Want to speak to a member of the Clarivate team about utilizing tools for a brand launch? Contact us today.
[1] IP Facts and Figures 2024 – Global intellectual property applications and active IP rights
[2] USPTO trademark application approval rate: Era of decline
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