TRADEMARK CHECKING

Trademark Checking

Trademark checking is an integral part of our process to establish whether a potential brand or company name is already taken.

When a name seems perfect for your business, chances are a competitor has already thought so too.


The brand name may not yet be in the market but if they’ve already registered it as a trademark this could put you at risk of an infringement suit when you launch. Even where the infringement risk is manageable, a prior trademark registration could still block your own registration for the name.

 

By our trademark checks, we appraise this risk upfront, so you don’t waste time pursuing naming avenues which are blocked by problematic trademark hits.

Trademark law is complex and our skill in trademark checking takes those complexities into account when reporting potential problems in language which a non-expert can understand.


A particular complexity is that trademark rights are territorial. For a brand name with global reach, you need clearance in 150+ trademark registries covering as many countries.


Searches are done by product class and the internationally accepted Nice protocol uses 45 classes (1 to 34 for goods, 35 to 45 for services): select too many classes for the trademark checking and you’ll get snowed with irrelevant hits; select too few and you could miss a vital blocker.

Evaluating those hits intelligently requires specialist experience. And trademark rights arise not just by registration but also through use. Your registry search may show no hits but you need to check for prior users too.


Also, descriptive or overly positive names, even when registered, can lack the strength to stop lookalikes.


We use a staged approach for cost-and-time-effective assessment of potential brand names, to identify early on those carrying an unacceptably high infringement risk and help you prioritise which are the surest to take forward to full clearance and registration.

Identical Hit 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.

Short List Prioritisation

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.

Blocker Circumvention

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.

Here at Appella, our over-riding aim in trademark checking is to clear and evaluate the protectability of brand names as an integral part of our naming process, eliminating non-starters up front and optimising your eventual legal spend.  

Case Studies

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