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Why is accuracy in trademark search so important?

Trademark practitioners of course know the answer but often have a hard time explaining it to their clients or to their organizations.  

"Because without that accuracy you do not know, if it is safe to launch the new brand. And a future conflict is not something you want to risk." 

Even if that should be rather easy to understand for trademark owners, there are a lot of premium trademarks launched without accurate clearance work done. It is our objective to change that with four unique Markify properties:

1. Find All Potential Conflicts

The Markify technology is the world's only statistically proven trademark search algorithm. Built on more than 12.000 actual cases where a government official in the US or the EU have concluded that two mark names are confusingly similar.

So we know we find the potential conflicts (+99%). We are not guessing. See the independent research study.  

2. Less Noise 

Our statistical method also let's us reduce the "noise" in reports and rank all results according to their statistical risk. 

3. Fast and Easy Work-Flow

This full availability search just takes one minute. And the available tools to get the clearance work done are both powerful and easy. 

4. Best Price and Free Trial

Taking a risk with a less accurate trademark search report is something very few companies can afford. We at Markify believe you should be able to combine top quality in a comprehensive report with a low price, so you never have to take that risk.

Visit the Markify exhibition booth (#1316) in Orlando for a demo and get your free trial.

If you are not there, send me an email at benoit@markify.com.

Since we started Markify six years ago our aim has been to build and improve the world's best trademark search algorithm. Finding all potential conflicts but with as little noise as possible.

Now we are releasing our next step in that work - our statistical Risk analysis. 

The ranking of our results is based on a statistical analysis of more than 10.000 official cases of confusingly similar trademarks in the EU or the US. These come from OHIM decision and from USPTO 2(d) citations and TTAB decisions. 

The main difference between these two sources are the number of languages they handle. While the USPTO largely concentrate on English, and Spanish to some extent, the OHIM/CTM decisions handles 28 countries, all with a mix of languages.  

Instead of showing the individual risk level for every result, we have gouped the results in four "Risk level" groups. Each level indicate statistically how big risk there is that you will find a potential conflict in this group.  

Level 1 - Very high risk.

Of all conflicts in Europe or the US, 20% have these types of similarities. 

This group of results typically stands for less than 1% of the total amount of results. 

Level 2 - High risk. 

Of all conflicts in Europe or the US, 40% have  these types of similarities. 

This group of results typically stands for only 5% of the total amount of results. 

Level 3 - Medium risk. 

Of all conflicts in Europe or the US, 25% have these types of similarities. 

This group of results typically stand for 20% of the total amount of results.  

Level 4 - Low risk. 

Of all conflicts in Europe or the US, 15% have these types of similarities.  

This group of results typically stands for 75% of the total amount of results. 

As you can see above, the lower the risk, the longer the result list. The last group of results contain 75% of all results, but with only 15% of the potential conflicts. 

This is frustrating for us developing the algorithm and for our clients, who have to analyze all results. Just think how much easier trademark clearance work would be if you could just skip Level 4. But unfortunately there are so many conflict cases in this group that you cannot neglect it. 

However, in some cases I know that the attorney does skip the lower part of the results list. This is often the case when he wants to save time and money for the client and maybe when the client feel that an opposition is not the end of the world. 

For other clients, with a marketing start in the near future, that would not be an option. They would not want to risk the first six months of marketing investments... 

Risk levels are currently not included in downloaded reports. Our thinking is that most of our clients' clients will not understand the meaning of "risk". It is just there in the online report to make your job faster and easier. 

Please send me your feedback at benoit@markify.com.

Notes

The "signal-to-noise ratio" - the scientific name for measuring accuracy - is tested as the best in the trademark search industry (see independent Benchmark Report). 

The Markify Comprehensive Search Algorithm finds more than 99% of potential conflicts, but does it with a total number of results that on average is 50% lower than comparable reports (Full /Comprehensive reports) done by other providers. 

Once again we have looked at all EU and USPTO trademark applications the last year - 2012 - and done a quick analysis of what words are used.

Raw lists of the popular 1000 trademark words can be found here: Top 1000 USPTO trademark words 2012, Top 1000 CTM trademark words 2012

The total number of different "words" are over 130.000. The distribution is as usual: 90 percent are used less than 5 times, like PINTEREST and JABRA, and the top 10 percent are used up to 2000 times, like ONE and LOVE.

Popular USPTO trademark words

What words were popular 2012 when it came to getting a US trademark registration?

A new word on the top list is CLOUD, wich was strong already in 2011 with 372 occurrences and this year made it to the top list when it showed up in 454 trademarks applications. Compare that with 2006, when CLOUD only showed up in 28 trademark applications.

Other trademark words moving up on the list are: WATER, FREE, STAR, BODY an NATIONAL.

Single letters are very popular in trademark filings, like T, N and E. A rising star here is the letter M, which appears in more than 700 trademark applications last year compared to 450 the year before.

Words moving down on the list are GREEN, REAL, USA and SOCIAL.

The top 100 USPTO trademark words 2012:

Note that we have eliminated the most common "stop words" like  THE, IS, AT, YOU, AND etc, and some company attributes like INC, LLC, COMPANY and GROUP.

Popular EU trademark words

We have also done a similar analysis of the very popular EU trademark registration called CTM (from OHIM). A CTM (Community Trade Mark) covers 27 countries and many languages. Surprisingly there is not a large  difference between the EU trademark list and the US trademarks. English is the dominating language, at least in the  in the pan-European trademark registration CTM.

A couple of trademark words you find in the CTM top list that you don't find in the USPTO top list: ECO, HOTEL, LONDON, QUALITY, ROYAL, EASY, EUROPEAN and PARIS.

The most basic reason to do a comprehensive trademark search is to avoid trouble.

When you start a new business or a new brand you want to be completely sure that you will not have to change that name later. Changing business name or brand 12 months or more after launch is often a disaster.

To stay out of trouble you have to avoid what the law calls likelihood of confusion. You can read on the USPTO's (The US Patent and Trademark Office) website: "A complete search is one that will uncover all similar marks, not just those that are identical." http://www.uspto.gov/trademarks/process/search/

So you have to answer the question: Are there other similar trademarks, being used for similar or related goods or services?

To answer that question you should do a free comprehensive search at Markify.com (there are other trademark search engines but no one nearly as accurate that is also free, see report).

1. Choose you primary market: US or Europe.
2. Limit your search to 1-3 relevant classes (business categories)
3. Go through the result list and make sure that none of the marks is both:
   • Too similar and
   • Do similar things

Depending on your result list, this can be a bit tricky, learn more. It’s often worth a good nights sleep to get a professional opinion from a trademark attorney.

Why should you do a trademark registration?

A registered trademark is basically a cheap insurance against conflicts - trademark infringement. There are two types of conflicts you want to stay out of:

Conflict type 1 - Copycats steal your name.

• Without a trademark registration you will have a hard time fighting off the copycats. Having competition is diffcult enough, but when they start stealing your customers by using a similar name, you have a damaging sitiuation.
• Even if it is unusual, you can build a strong trademark without doing a registration. If you have built recognition for your brand name in a market, you have actually established a trademark without registering it. But the hard thing is proving it, and being prepared to do it in court. A registration will from day one give you proof that you were first.

Conflict type 2 - You are the copycat, most often without knowing it.

• You don’t want to get a letter from lawyer saying you will have to change name and pay for damages because you are too similar to an already registered trademark. Trademark search followed by a trademark registration is the best way to avoid this kind of trademark infringement.

For most businesses with any ambition, a trademark registration is a cheap way to stay out of conflicts. Put another way: You are securing the value you are creating in your business.

When can you skip a trademark registration?

You may save the trademark registration fee, if you agree to any of the following two statements:

A. It really doesn't matter that somebody starts using the same or a similar name.

• This is the often the case when you plan to use a very generic word or phrase as your business name/domain name - like Fund.com or CowboyHatsStore.com. The name is impossible to trademark and no one can claim that it is confusingly similar to their registered trademark.
• A good generic domain name can help in bringing in a lot of customers. But the risk that is often neglected here is that a competitor starts doing business with a very similar name/domain name, "stealing" or deceiving your customers. Examples:
• - Fund.com may loose some customers to Funds.com - Here both parties are probably well aware of the risks.
• - CowboyHatsStore.com will have to live close to CowboyHats.com in the web search results.
• - AutoRepair.com taking customers from AutoRepairs.com - This kind of situation can of course be very damaging.

B. It really doesn't matter that you might have to change your name in the future.

• Very few businesses would say that they are willing to take this risk. But the fact is that many businesses do, often without being aware of it. Sure, most of them are lucky and don’t end up in conflict. But many thousands of them get that letter that will force them to change name - which is a time and money consuming nightmare.

So, even if you’re going to skip a trademark registration, you should still do a trademark search and make sure there are no confusingly similar trademarks out there, in your markets, doing something similar.