Companies use trademarks to protect their brand identity and prevent competitors from using their marks without prior permission. But a business simply cannot create or select a brand name or logo and start using it as its own trademark. And before applying for a mark, it is important to conduct a trademark search that enables businesses to detect any existing trademark that may be similar or identical to their selected mark. While trademark search offers crucial insights needed before filing trademark registration applications, it also helps in identifying potential misuse or infringement by others.

In this article, we will cover a case study where our trademark search service helped a Canadian law firm protect its intellectual property and steer clear of any infringement. The client also made a customized request to share the results in a specific format which was adhered to.

Problem Overview 

A Canadian law firm, which has been offering legal advice to its clients since 2017, requested our assistance in performing a trademark search. The client needed a comprehensive trademark search report and also shared the following guidelines with us:

• Images should be in a separate column next to trademark names.
• The report should be shared in an MS Word document whenever a proposed mark fetches a large number of results.
• Trademark search should be performed on the Canadian Trademark Database.
• Results should be categorized separately, with and without class, based on status (expired/dead/ended/live).
• Trademark name and application number should be picked from the Canadian Intellectual Property Office (CIPO) database.

Thus, Sagacious IP’s trademark experts were faced with the responsibility of conducting an in-depth trademark search and sharing the results in a customized format.

Our Approach

We undertook the following steps to serve our client:

Our trademark team first addressed the client’s concerns by imparting relevant knowledge pertaining to trademark searches. Then we proceeded to perform the task and prepared a report as per the client’s guidelines. As per the client’s request, our team also:

• Shared results in an MS Word document: Although we typically share trademark search results in an excel sheet, our team shared the results in a word document as per the client’s request.

• Hyperlinked application number: We also hyperlinked the application numbers for the client to conveniently access the relevant documents.

Result

Our client was impressed by the accuracy of the results and timely delivery, which was helpful in protecting their intellectual property from infringement. Since January 2021, we have performed 29 trademark searches for the client.

Sagacious IP’s team of trademark experts specializes in offering customized search services to our clients. We cover all the possible combinations, different variations, and phonetically similar marks in our trademark search to prepare a comprehensive report of these searches. Our team is also committed to sharing the most accurate results to help our clients stay ahead of the competition in the IP space. Our clients keep coming back to us every time they need IP-related services. This speaks volumes about the quality of services we provide.

The trademark searches offered by Sagacious IP are meant to assist companies in identifying exact and similar trademarks in the same classes or for the same goods/services. Our trademark search team is dedicated to providing the most accurate trademark search reports in a timely and cost-effective manner. To learn more about this service, click here. You can also look at the numerous other services we offer on our website.

• Yogesh Kumar (Trademark) and the Editorial Team

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