Trademark Comprehensive Search & Watch Practices: Challenges and Solutions


IP focused industries often face tons of challenges when they start their search for proper trademark solutions. Moreover, they forcefully conduct several ‘hit and trial’ measures to get the desired results. Thus, this helps in not realizing the specialized services offered by companies to assist with their trademark comprehensive search and monitoring requirements.

Thus, we find it imperative to define the challenges faced by trademark practitioners as well as the ideal solutions out there to deal with these challenges. These solutions can scale their business via adding revenue and bandwidth without incurring any liabilities.

trademark-comprehensive-search

Trademark practitioners such as solo trademark practitioners or patent attorneys from small sized, or mid-sized, or large size law firms, and corporate councils, often need assistance for carrying out their research work on the trademarks that they file for their clients.

Trademark practitioners look for search options, companies and databases that can help them in conducting trademark comprehensive searches. This helps them in forming a legal opinion on the trademark registrations. Further, they decide on the next step concerning the trademark filing.

After they file their clients’ trademarks, Trademark practitioners often keep a watch on other similar marks that are under filing process. This helps them in taking the necessary legal actions to preserve the rights of their clients’ trademarks.

Typically, an attorney or a trademark professional would not want to devote much of their time on screening the near similar marks for generating their legal opinions and watching their clients’ filed marks. And here is when they look out for an efficient and expert trademark search and watch provider for pursuing their trademark comprehensive searching and watching work.

Also Read: Interesting Facts about Trademarks

TM Searching Challenges

Sudden increase in workload

The first thing for any trademark practitioner to do is to form a legal opinion on the registration of the mark. They may go ahead with the following steps. Hence they must conduct a trademark comprehensive search through the Patent Office databases. Moreover, they have to check the general use of the mark in the internet, search engines, journals, or other social media platforms, newspapers, etc.

This new set of tasks keeps them away from the valuable time trademark practitioners would ideally spend on the research work. Further, they would like to use a search expert vendor, or maybe pass it on to their associates or a paralegal who can do the searching and then share the report. Moreover, it is critical that the search report is a reliable one as their legal opinion is based on the search results of that report.

Additionally, if relevant results are not present in the report, complete analysis of forming their legal opinion can change. This can additionally result in loss of both time and money for their clients.

Also Read: Trademark Search Database

Hiring professionals for conducting searches

In order to mitigate the task of searching, trademark practitioners lookout for options. The idea of building an internal team is another area of concern as the hiring process will probably take more time, effort and money than hiring a professional to do the task. At this point, there is a dire need to hire a professional who is trust-worthy and reliable.

Therefore, below are the solutions for trademark practitioners against the challenges set above for trademark comprehensive searching.

Also Read: Trademark Attorney: What difference it makes?

Trademark Comprehensive Searching Solutions

External Trademark Expert Team & liability of the searches

TM practitioners must allocate the searching work to a trusted search provider who can provide quality search report. Thus, trademark practitioners can come up with a quick and accurate legal opinion. A trusting company should be able to run a trademark comprehensive search with quick turnaround and high quality.

Comprehensive reports with relevant results

When you are outsourcing the searches, you are moving the liability to the searching team. A comprehensive report with relevant results is the key. The report should avoid any junk results and also have the flexibility of customization.

Customized reports

Customized reports helps with the ability to perform screening searches, AI searches in order to form quick legal opinions. Screening searches cost around 70-80% less than the conventional searches and it also has the benefit of obtaining quick results. Therefore, whichever is most likely for registration marks, can go for a comprehensive or full search for those chosen marks that have been narrowed down by screening.

Also Read: Major Trademark Registration Benefits You Need To Know

Trademark Watch Challenges

Lack of budgetary focus on TM watch

You may observe that start-ups, small or medium-size companies often do not undergo trademark watch exercises. Moreover, they are not keen enough to allocate budget towards trademark watch as they are more inclined towards developing their business/products.

Also Read: Trademark Monitoring: Why is it indispensable for Businesses?

Trademark Watch Solutions

  1. Trademark practitioners can add TM watch as a service in their filing package
  2. Create Trademark Watch as a subscription service for their clients
  3. Add a source of recurring revenue and better engagement with their clients

Also Read: How to Do a Trademark Image Search in the USPTO Website

Business and Time Related Challenges

Business expansion

This includes challenges like that occur while going forward with a business expansion from one country to another. Moreover, at this time the product or services are truly unique and one requires the concerned legal formalities.  

Building internal expertise and investing on searchers/searching tools

For smooth coordination and all the other necessary decisions, it is very important to build an internal expertise at first so that the searching process can become fast and reliable which is very challenging as there are different opinions and different conclusions. Also, to form an expertise on the searching tools and its functioning, it takes a good amount of time on searchers and the searching tool.  

Also Read: What is Trademark Violation?

Business and Time Related Solutions

External team can take care of trademark searching/monitoring related work

You can hire a professional external team who is an expert in searching and monitoring work. Moreover, you get more time to invest on other important activities such as business/product development, etc.

Websites for ordering TM search or watch services

www.thetrademarksearchcompany.com and www.thetrademarkwatchcompany.com

Also Read: Trademark and Trade Name – Know The Difference

External Trademark Expert Team

An External Trademark Team model approach is the newest and most efficient way to make your business a success. With this model, you can hire TM experts, team from different geographical areas, and have an in-house team without taking any liability.

Key benefits of an External TM Expert Team

  1. The best hand-picked talent
  2. Focused and experienced TM searching team
  3. Flexibility in work iterations
  4. Transparent and effective payment model
  5. No-hassle of setup and operations
  6. An easy start with high scalability

Also Read: Top 6 Trademark Registration Advantages

How Sagacious IP lends its expertise in Trademark Search and Watch?

Sagacious IP’s External TM Expert Team helps clients

  1. Experienced External Trademark Searching Team
  2. AI-based and Manual platform for searching
  3. Global or Multi Countries Searches
  4. Online order platform available
  5. Trademark Search cost starting from USD 49
  6. Trademark Monitoring cost starting from USD 49
  7. Provides expedition and delivery of reports in 24 or 48 business hours

To conclude, Sagacious IP acts as an extended team for trademark practitioners. It provides high quality trademark comprehensive searching and watching service. Moreover, our team of in-house expert trademark searchers are adept in assisting attorneys and other trademark practitioners with effective trademark searching and watching service.

We restrict the results with NICE clauses and goods and services can then capture the phonetic variations, language, equivalence of the mark in the search reports too. This gives a full-length comprehensiveness to the report. Further, we also prepare a separate spreadsheet which enables trademark practitioners to get all the results without having to look into the main report.

Additionally, we also conduct screening as well as comprehensive searches. We also provide customized reports to the trademark practitioners. Thus, we help them in forming quick legal opinions without wasting their time and cost.

Sagacious IP has been a pioneer in this service and has served over 200 clients. We have also included an exclusive one month free monitoring service offer for a mark, or 25% off on a trademark. If you would like to avail this offer or would like to know more about this service, please click here. Watch our webinar on the same topic here.

The Trademark and Editorial Team

Other Related Articles

Trademark Monitoring: Why is it Important for your Brand?

A to Z of Trademark Registration

Trademark Filing Fees: A Quick Overview


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