Why Trademark Clearance Is Essential Before Launching a Brand

According to the World Intellectual Property Organization, approximately 15.2 million trademark applications are submitted globally each year[1]. With the expanding volume of trademarks in the market, the process of searching for and securing a new global brand becomes increasingly difficult annually.

The initial actions when launching a new brand are critical, particularly trademark screening and searching. However, if these activities are not performed carefully and systematically, the trademark search process can be time-consuming and costly. Thus, how do trademark professionals ensure they can succeed globally?

Crucial Points for Effective Global Trademark Clearance

We've outlined six useful methods to refine the trademark clearance process, ensuring the protection of new brands across various territories. This guidance will be helpful to trademark attorneys, from those recently qualified and training, through to well-established experts, as it explores the complexities of global trademark clearance in detail.

Plan, Budget and Build a Buffer

To guarantee a brand's successful launch, it’s crucial to work backwards from the desired launch date. Allocate adequate time and funds for the required screening and searching needed to clear the name. Though straightforward, the planning stage is frequently as vital as the search itself.

Understanding when and where help is needed prior to beginning allows for proper distribution of appropriate resources and technologies. Engaging local expertise improves chances of success by giving a complete view of local practices, languages, and laws pertinent to the new brand's launch.

Start with Numerous Potential Options

Competition for a name that captures attention is high. During the clearance process, the use of one or more names will likely be unavailable. Considering that nearly half (48.3%) of all trademark applications filed with the United States Patent and Trademark Office (USPTO) are unsuccessful[2], it's important to inform the appropriate teams and stakeholders of the significance of creating a robust list of potential names to boost the likelihood of successful brand clearance.

Screen Before Searching

Often, screening isn't adequately utilized prior to a search, but it's crucial to identify any significant issues before a search begins to secure success. What issues have previously arisen in the regions being investigated? Are there identical trademarks that already exist?

It’s equally critical to check the availability of domain names and social media handles that are important for any new brand. This is an essential step in the digital age and it should not be overlooked. Regional nuances for social media and domain handles should be addressed at this screening stage to make certain potential trademark conflicts are not disregarded. There are currently over 160 million domain names registered in the .com top-level domain (TLD), making it increasingly tough to identify a matching domain name for a new brand. Therefore, 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 by using the appropriate online screening solution, ensuring that a mark’s viability can be evaluated before investing resources into a complete search. The process is more essential than ever thanks to technological advancements that permit screening for both word and device marks.

Employ a Phased Approach

Searching every market and across numerous Nice Classes isn't frequently realistic. However, risk can be balanced against limitations on time and cost by defining key jurisdictions and restricting searches to important markets and essential Nice Classes.

As a first phase, it can be helpful to search for shortlisted and preferred names in three or four key markets. In the next phase, searches can be carried out in additional markets for names that are successful in phase one.

Executing a high-quality trademark search is crucial for preventing conflicts that could delay market entry and lead to costly litigation fees.

Utilize Trademark Organizations Allowing Multi-Jurisdictional Services

Screening and searching lead to trademark filing, and at this stage in the process, it can be important to utilize organizations that permit multi-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 acquiring trademark protection in many jurisdictions efficiently and cost-effectively, alongside national applications where required.

Post-Filing Considerations: Lifecycle of a Trademark

Though it might appear that the process ends after a trademark is filed, this isn't the case. Remembering the trademark's complete lifecycle is crucial to ensure the trademark isn't put at risk. Consider the importance of maintenance and commercial exploitation phases post-filing, as well as searching, filing and watching earlier on.

A trademark maintenance program is key for protecting intellectual property rights. Without proper maintenance, trademark registrations may be threatened, making the brand vulnerable to infringement and loss of exclusivity. Timely renewals are integral, along with addressing any legal challenges and updating the trademark's status as needed. Following these protocols ensures ongoing protection of the trademark, sustaining its value and preventing expensive legal disputes.

Plan, Strategize, and Execute

Successfully clearing a new brand for global usage requires meticulous planning, strategic execution, and utilizing the correct resources and expertise. By employing the six strategies outlined in this guide, attorneys can navigate the complexities of trademark searching with more confidence and efficiency.

How can Clarivate Assist with Trademark Clearance?

Clarivate offers a variety of tools and resources designed to assist newly qualified attorneys in understanding the trademark lifecycle and offer experienced attorneys opportunities to refresh and improve their knowledge.