Global Trademark Search: How Sagacious IP Used Unconventional Search Strategy to Yield Results

A trademark can be a logo, design, phrase or symbol that distinguishes one’s goods and services from others in the market. In order to legally protect this symbol of brand identity, businesses register it with the respective trademark authority. Before registration, companies often perform trademark searches to make sure that the mark is unique in the respective market. However, sometimes, these searches can hit dead ends and may not yield desired results. In such scenario, the search methodology requires a distinctive approach to obtain required outcome.

The following case study pertains to a similar challenge. It explains how Sagacious IP’s trademark search team delivered accurate results for the majority of a client’s global trademark search projects, wherein they couldn’t draw definitive results. So, let’s begin with understanding the problem first.

Problem Overview

In this case, the main challenge was to share comprehensive search results for trademarks owners’ name and related goods and services, for which an exhaustive search had already been performed.

Sagacious IP has a Beijing-based client who is the owner of an IP consultancy firm and is highly experienced in overseas trademark protection. The client performs global, multi-country and single jurisdiction trademark searches. However, whenever it hits a roadblock while performing trademark searches, it reaches out to Sagacious IP.

This time, the client approached Sagacious IP for conducting a trademark search for renowned social media giant. The client wanted to know how many products or services were being provided with that particular name all over the world and the owner’s name under which the service mark was registered. Essentially, whenever a trademark search is performed, the owner’s name is one of the components of search results.

The client demanded favorable search results for the specific goods & services or ‘Nice Classification’ shared by it. (Nice classification helps with the trademark application process by ensuring that the goods and services covered in an application are uniformly classified in all trademark offices.) While dealing with the problem, Sagacious IP’s search experts had to make sure that all the related results regarding goods and services, covering all the possible combinations, different variations and phonetically similar names, were included in the report.

Solution Offered: A Detailed Global Trademark Search Report

Sagacious IP took up the complicated trademark searches to provide an adequate solution to the client. The steps taken to offer comprehensive results have been encapsulated in the figure below.

Figure: How Sagacious IP offered definitive trademark search results to the client

The trademark search team first conducted regular trademark searches using highly effective paid databases to obtain desired results. Nearly 182 databases of different countries were searched and the results were also cross-verified with the national patent and trademark offices. To optimize the results further, the experts also searched web content, and world-famous newspapers, yellow pages, white pages, domain names, and auction sites like Ebay and Alibaba.

Finally, the team provided the client comprehensive results with details of all products/goods and services related to the name and the nice classification shared by the client. To assist them further in handling the complicated case, the team also shared a general opinion/specific comments in the report to help the client acknowledge the results better. These opinions and comments saved time and helped in avoiding communication gaps during the search process.

Outcome

The client was completely satisfied with Sagacious IP’s trademark search results provided in the form of a comprehensive report. They lauded the timely delivery of accurate search results, which enabled them to respond quickly to trademark protection-related issues. So far, Sagacious IP has performed a total of 36 trademark searches for the client. Based on the delivery of accurate results, Sagacious IP has endured a year-long relationship with them and looks forward to receiving more search projects in near future.

Sagacious IP performs accurate and exhaustive trademark searches that offer businesses the insights they need before they file for a trademark. Our team of expert trademark analysts offers quick and cost-effective trademark search solutions to organizations, helping them to prevent infringement and rejection-related issues.

  • Aditi Yadav (Trademark) and the Editorial Team

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