Trademark Checks

This trademark checking phase, typically deployed for long-lists of names, picks out identical trademark registry hits (where a third party has already filed to register the same name) in relevant countries and classes. We grade these hits for trademark infringement risk. At the same time, we highlight brand names which could be problematic to register as trademarks for other reasons (e.g. inherent descriptiveness).

Just because a key class shows an identical hit doesn’t rule that name out automatically: some trademark classes (such as class 3 covering cosmetics and industrial cleaners) are broad enough to permit co-existing trademark registrations - but knowing where to draw the line on whether and how to co-exist calls for specialist expertise and experience. 

There are other trademark checking factors we put in the mix which the less experienced might miss: for example, some registries are less relaxed than others about co-existence; what looks like a blocker registration might be cancellable for non-use; an identical hit in logo form might not be a knock-out for descriptive names; and so on…

Our 30+ years specialising in trademark checking and protection strategies underpin these identical hit trademark registry/in-use checks to give a practised and pragmatic perspective on which names to take forward to the shortlist phase.

For a short list of potential brand names (typically 2 or 3 names), our extended trademark evaluation checks are run on phonetic equivalents for each name across all relevant classes and countries. We also establish which of these names are in use and appraise how likely in practice the prior rights holders are to object.

The resulting trademark checking report summarizes potential pitfalls for each name so as to empower your final name selection.

We also recommend fuller clearance in key territories using local specialist trademark counsel (but our extended evaluation trademark checks are a fraction of this fuller clearance cost).

Where a brand name is blocked but not in use by the prior rights holder, we have the skills and experience to secure the name rights you need for a price that suits your pocket.

To build the right strategy, we understand how to maximise negotiating leverage by (for example) threatening non-use cancellation actions and arranging priority marker filings to leapfrog intervening applicants for the same name.

It also helps that we can in parallel (as a fallback should negotiations fail) develop equivalent names which work equally well but bypass the blockers.