Profile of a Trademark Searcher

[tweetmeme source=”Intellogist” only_single=false] Here at the Intellogist Blog, we’ve interviewed a wide range of intellectual property professionals:

Over the past few month, we’ve looked at a number of trademark search tools, but a user can’t conduct a comprehensive trademark search if they lack the necessary search experience and expertise in trademark law.  Professional trademark searchers will also have access to both free and subscription trademark search platforms, which allows them to conduct an extensive search of all available databases. Landon IP provides professional trademark search services, and I recently had the privilege to interview Kimberley Trainor, the trademark search manager at Landon IP.

Read on as Kimberley discusses the different types of trademark searches and what it takes to conduct a professional trademark search!

Joelle Mornini: Can you give a brief description of your professional background?  How did you become involved in the trademark law field?

Kimberley Trainor: I attended the University of Sydney and received a science degree, after which I went into research for a brief period.  I then worked for a major Australian law firm as an IP paralegal drawing on my science background, and during that time I went back to University to study law.  To compound my busy schedule I took on a post graduate course in Trademark Law and Practice which allowed me to fulfill the additional qualifications to become a trademark attorney, so that’s how I got into the trademark law field.

JM: What trademark search experience did you have during your time as a trademark attorney?

KT: As an intellectual property paralegal, I conducted trademark searches for two or three years before I even became a trademark attorney.  I also conducted many of my own trademark searches during the seven years I was a trademark attorney and lawyer.

JM: Can you describe the different types of trademark searches that you conduct?

KT: At Landon IP, we conduct everything from a comprehensive to a “knock-out” trademark search and can do so over a number of jurisdictions. Comprehensive searches are as exhaustive as we can make them, so we search based on the spelling/misspellings, phonetics as well as the concepts or general ideas surrounding the word or phrase.  “Knock-out” searches look for exact or nearly exact matches to a word or phrase, and these searches are useful for a client who is interested in whittling down a list of potential trademarks by “knocking out” the ones with obvious issues.  The client can then have a comprehensive search conducted on the remaining trademarks.

Both comprehensive and “knock-out” searches can cover trademarks in the US federal register, US state register, and/or common law databases.  A common law search attempts to determine whether someone has used a trademark without applying to register it formally.  We can also conduct searches across more than 100 countries, utilizing a number of subscriptions and publically available databases.

We also offer a “watching service”, which can include conducting a watch on a specific mark to determine whether it has matured to the allowance/acceptance stage such that it can be opposed, or perhaps on an exact or near exact word/phrase to see whether a third party has filed an application of concern.  We typically conduct the watches monthly because the window for opposition is 30 days in the USA, but of course in other jurisdictions the watch cycle may be different.

Practitioners and attorneys may also have a need for Due Diligence style trademark searches, and we are also able to conduct those across a number of jurisdictions to provide assurance and comfort during mergers and acquisitions.

JM: What kinds of specialized knowledge do you need in order to successfully conduct a trademark search?

KT: You need to know how the trademark system works, especially the examination process.  You need to know what makes marks too similar, so you can construct a suitable search strategy enabling you to identify the most relevant trademarks during a search.  That is the benefit of being an experienced trademark attorney: you understand the relevant laws and legislation and have been exposed to Office/Court decisions allowing for the development of your own idea of how close is too close.

You also need knowledge of which databases to search and experience in Boolean/truncation search strategy.  This sort of knowledge can only be gained by experience.  By being exposed to lots of different situations over lots of trademark searches, you gain the knowledge and experience to deal with unique search issues.

JM: What are the benefits of hiring a professional searcher to conduct a trademark search?

KT: The client gets a searcher who has years of experience, who knows trademark legislation, and who has knowledge of the trademark search systems and Boolean-style searching. Each client will also get a report from the searcher in an easy-to-use format that includes the entire search strategy as well as the bibliographic raw data, so the client can judge for themselves how comprehensive the search was. Finally, all Landon IP trademark reports are analyzed by an experienced trademark attorney, and an “analyst’s note” section is included in each search report.  The “analyst’s notes” section identifies obvious issues or trends that appeared during the search and is a valuable tool for the end user. In short, we know what we’re doing, and you’ll get the benefit of that experience through a detailed trademark search report overseen by an attorney.

Kimberley Trainor, a registered trademark attorney and lawyer licensed to practice in Australia/New Zealand, is the manager of trademark search services at Landon IP.

Patent Information from Landon IP

This post was contributed by Joelle Mornini. The Intellogist blog is provided for free by Intellogist’s parent company Landon IP, a major provider of patent searches, trademark searches, technical translations, and information retrieval services.


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