At the first glance, to ask “if a pre-application trademark search is necessary” sounds silly enough! One day a man comes with a crystal ball, suggesting to you that the ball can tell if your new juice business will become a red hot hit in 6 months’ time, won’t you be tempted to try this magical ball. Putting it into the context of trademarks, running a pre-application trademark search is typically recommended. You will have a bigger picture of the possible obstacles ahead during the trademark journey to make an informed decision at the outset.
On second thought, however, asking about the necessity could only be right! Practically we still need to sort out two critical follow-up issues:-
(1) Do I need to pay for the crystal ball? If so, at what cost?
(2) Does the crystal ball really work well?
You may pay a trivial US$200 for the magical ball, but therefore invest a whopping US$500,000 on your new juice business following the ball advice. It will be a nightmare if the business ends up with a total loss! There are different kinds of crystal balls available in the trademark market, and let’s take a closer look of them in turn.
Doing Pre-Application Search on Your Own
The beauty is that you don’t need to pay a single penny. Whether this crystal ball works will also totally hinge on your ability.
Online trademark searches are available on many trademark offices’ websites. To keep your search results meaningful, you should be equipped with the basic knowledge of trademark laws. (Refusal on Relative Grounds and Refusal on Absolute Grounds.)
Being able to locate similar trademarks is by no means a done deal. It is the determination of similarities between the earlier marks and the proposed marks which matters. Even if you have a general understanding of trademark laws, your crystal ball might be in malfunction due to unfamiliarity with the local laws/culture:-
1. Whether Mechanical Examination will be applicable under the local rules?
2. If the specification in one class will be cross-searched against other classes under the local rules?
3. Do you know if a certain word will be conferred a secondary meaning under the local culture?
Engagement of local experience will certainly pay dividends!
Doing Pre-Application Official Search by Trademark Offices
Some Trademark Offices offer pre-application official searches at limited official fees. It will typically take a longer period to receive the official search results, which may not fit well for urgent projects.
This crystal ball is massively good in quality. It is the Trademark Office that will end up examining your trademark application, so who else can provide a more authoritative pre-application search report than they do. What worries us is that you are innocent enough to blindly believe that it is the end of the world and that the negative result is all but unchallengeable. After all, examiners are also human beings, and their decisions could not always be flawless. Understandingly, as the regulator, the examiners also tilt towards the cautious end and tend to issue official refusal for borderline cases. That said, it is not uncommon to see that an examiner changes his/her mind upon persuasive submissions prepared by professional local agents.
Doing Pre-Application Unofficial Search via Local Agents
Arguably, a professional local attorney gives you the best crystal ball, but also at the highest costs.
Unlike the trademark office, the local agent is responsible for giving you the most realistic prediction, not necessarily being conservative. Furthermore, search results should always be seen in a broader context, i.e. the commercial and legal factual matrix involved in your case.
Assuming you now come to us with a pretty negative search report, Trasomark will help you formulate cost-effective strategies for the ways forward:-
1. Whether there is any real prospect of overcoming official refusal. If so, on what grounds?
2. Whether you have commenced commercial use of your proposed trademark? If so, please show us some evidence of use.
3. How far you are ready to go with your proposed trademark? Or Re-branding is a real option?
4. Investigation on the background of earlier mark’s owner.
5. Consider if earlier registered trademarks could be cancelled for various reasons.
6. Consider if the earlier registered marks are due for renewal or provide evidence of use soon.
7. What is the budget you reserved for taking this proposed trademark further via various actions?
Limitation of Pre-Application Search
We are sad to pinpoint the fact that the Pre-Application search result could never be 100% correct! Thanks to the Convention Priority System, it is impossible for a pre-application search to locate any trademark filed after such a search but with an earlier application date by claim of priority. We will discuss this further at Convention Priority System.
You should always conduct a pre-application search PROPERLY!
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