Fixed-price provider of trademark clearance services?

A member of the E-trademarks listserv asked:

Can anyone recommend a fixed-price provider of trademark clearance services?

Here’s what I think about that.

For mark clearances there’s at least a first part, a second part, and a third part.

The first part is finding out the business needs of the client with respect to the proposed mark or marks.  One metric for the business need is the number of dollars that would be down the drain if it were to turn out later that the mark turns out not to be available.  One extreme is the case where the consequences of failure are little more than the cost of reprinting business cards and letterhead.  The other extreme is the case where the choice of a new name is a “bet the company” kind of decision, and if it were to turn out the mark is unavailable the client loses every penny and every hour of time that has been invested in the company.

An example of a middle ground is the company that routinely rolls out ten new brands of prepaid long-distance calling cards per month, and very openly expects that one or cards will turn out to have names that cannot be used, and those two names are just quietly discontinued at minimal cost to the company.

Part of this counseling task is working out the geographic reach of the decision.  Is the client able to say that the to-be-adopted new trademark will never be used anywhere except in the US?  Or does the mark need to be available for other geographic areas?  Will the mark be used on services provided on a web site?  Will the web site be visible everywhere in the world?  Does the client need clearance everywhere in the world?

Part of this counseling task is learning whether there are particular candidate sources of trouble.  For example is the client’s business in an industry with clear boundaries and only a known and small number of competitors?  On the other hand is the client’s activity likely to attract attention of companies in a wide range of lines of business?  Is the client marketing to businesses, or to consumers?

Having worked out the first part, we then move on to the second part, which is the search.  This might be little more than a quick search in TESS for identical marks and a quick surf through Google.  Or might be a $600 search from Thomson & Thomson.  Do we care about phonetic equivalents?  What about a transliteration of the mark into Greek letters or Cyrillic?  Eventually the search is done and we have the search report in hand.  At a search firm the work might be done by attorneys but I’d guess most of the work is done by very experienced people who are not necessarily attorneys.

Now the third part, rendering an opinion.  Someone, presumably an attorney admitted to practice, studies the search report and draws upon the background accumulated in the first part.  And renders an opinion.

I’d guess it would be very difficult for any service provider to commit to doing parts one, two, and three in a general way for a fixed price.

One thought on “Fixed-price provider of trademark clearance services?

  1. Thank you for this very useful and informative reply. Very well thought out. It’s going into my ever expanding file on valuable trademark resources.

    I’m in full agreement with your last sentence. There are two aspects of this:

    1. How responsive and thoughtful is the client. In order words – how many times do you have to ask the same question in different words before you get a meaningful answer. It isn’t until you start working with the client that you can you make this type of determination.

    2. And, until you start digging and find out how crowded the field is and what idiosyncratic trademark issues might arise, there is no way to guesstimate the time that will need to be spent.

    For example: class 026 can include hair accessories, namely, hair ornaments with jewels and class 014 can include hair ornaments, namely jewelry?!

    This is the sort of difference that doesn’t make a difference that can drive you crazy.

    Owen

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