- in European Union
If you are still conducting trademark searches in-house, you could be wasting your time and resources. Discover how external trademark search solutions can potentially save your business money while improving efficiency and search quality.
Although many businesses prefer to keep trademark search tasks ‘close to home’ within their own legal department, managing trademark searching in-house could prove counterproductive for your intellectual property (IP) portfolio.
To optimize the efficiency of trademark searching for your legal department, let’s consider the benefits of using an external trademark search solution.
What are the Shortfalls of Managing Trademark Search In-House?
The biggest shortfall in tasking your legal department with conducting trademark searches is that it detracts their focus from other important tasks. Put plainly, your legal department exists for a reason— namely, the protection and evolution of your IP—and tasking them with something potentially onerous, such as a trademark search, significantly hampers this role.
Trademark searches can require a substantial investment of time, particularly for larger companies or businesses with large or international IP portfolios. Having your legal department conduct these searches may detract their attention from more pressing legal matters.
Having your legal department conduct trademark searches can also impact the quality of the searches themselves: your legal department may not have the requisite expertise to conduct these searches as comprehensively as necessary. For example, they may not search the relevant databases or take note of the uses of marks which are flagged by their search, both of which could make the search itself redundant.
An incomplete trademark search can prove disastrous for your trademark, with potential ramifications such as refusal of registration or revocation. If your legal department does not complete a trademark search fully comprehensively, then they have not only wasted time, but may have caused significant damage to your portfolio.
Similarly, internal legal departments may also struggle if you require trademark searches to be conducted on an international scale. Although not a particularly significant issue for smaller companies with limited IP reach (although an understanding of the international scale of the IP market may still be needed), companies with an international aspect to their portfolio will not benefit from their trademark searches being conducted solely by an internal legal department.
Often, these internal departments are based solely in one territory; therefore, the employees will only have a mindset tailored to this one territory. When conducting a trademark search, it is imperative to think on an international scale, as the search terms used in these searches may need to take into account the global nature of the IP market.
Taking into consideration factors such as variations in spelling, translations, and linguistic and phonetic variations of search terms, as well as cultural differences, is the only way to ensure that your trademark search has been conducted comprehensively. Not all internal legal departments have the time to focus on all these important factors.
What are the Benefits of External Trademark Search Solutions?
As we have explored, tasking your internal legal department with conducting trademark searches can not only waste or distract time and resources, but it could also prove counterproductive for the searches themselves.
Hiring external service providers to conduct your trademark search projects will not detract from the ongoing work of your legal department, leaving them free to focus on the protection and ongoing growth of your portfolio.
External trademark search providers, such as Questel, offer years of expertise and specific industry knowledge. Conducting these searches is their job; no one can do it better!
Concerning the international nature of IP, external providers differ from your internal legal department in that they will either consist of external counsels from different territories or they will have an international network and possess an awareness of the impact that different territories may have on your trademark search. This awareness is key in the ever-expanding IP market.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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