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CLEARING U.S. TRADEMARKS: FIVE SEARCH SUCCESS FACTORS

CLEARING U.S. TRADEMARKS: FIVE SEARCH SUCCESS FACTORS. JANUARY 1, 2012. MITIGATING BRAND RISK: FULL SEARCH. FIVE SUCCESS FACTORS. 1. Form opinions Make decisions with Advise clients with. CLARITY. 2. 3. CERTAINTY. 4. CONFIDENCE. 5. Data quality and accuracy

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CLEARING U.S. TRADEMARKS: FIVE SEARCH SUCCESS FACTORS

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  1. CLEARING U.S. TRADEMARKS:FIVE SEARCH SUCCESS FACTORS

    JANUARY 1, 2012
  2. MITIGATING BRAND RISK: FULL SEARCH
  3. FIVE SUCCESS FACTORS 1 Form opinions Make decisions with Advise clients with CLARITY 2 3 CERTAINTY 4 CONFIDENCE 5 Data quality and accuracy Intelligent search strategies Targeted common law coverage Streamlined reporting and analysis Expert, personalized support
  4. SUCCESS FACTOR 1 DATA QUALITY AND ACCURACY
  5. NOBODY’S PERFECT: USPTO ERRORS How common are errors in USPTO records? error rate overall device code error rate On average, that’s about ??# errors per week. 3% 4.5% 5
  6. SOLUTION: DATA QUALITY CHECKING Our Data Quality Team: Checks every single USPTO record Manually corrects errors,often within days Enters corrected records into our proprietary database Benefits to you: Your advice is based on accurate data Identify potential conflicts that might otherwise be missed Minimized risk of unforeseen infringements
  7. MILLION DOLLAR CORRECTION Applicant: MillionDollarLiving.com Mismatch between logo (real estate company) and JAAB mark(boxing equipment)
  8. PAWNING OFF ANOTHER ERROR Actual record from PTO TARR USPTO entry: PAY ANY WAY NECESSARY $ Our correction:addition of the word “PAWN” in the record.
  9. MASS MISMATCH Trademark mismatch error TMK should be “Mass Hysteria Entertainment” (MDC=3) word & design MDC 2 = Design only
  10. CORRECTING STATE DATA Trademark record from Connecticut Applicant: PICCAR Homes State database description: “double L” Our correction:changed description to “P” for Piccar.
  11. SUCCESS FACTOR 2 INTELLIGENT SEARCH STRATEGIES
  12. FULL SEARCH IQ TEST 1 2 3 4 Does the search: Look at all elements of a mark to identify all possible similarities? Distinguish the dominant terms or elements in the mark? Analyze search data in multiple ways to reduce irrelevant hits? Employ a search strategy customized to your specific needs? Answering YES increases chances of identifying key findings.
  13. SOLUTION: SEARCH WITH INTELLIGENCE Our experienced search analysts: Determine which term or element is dominant. Take into account all elements of the mark. “Dissect” data in multiple ways. Target results most relevant to your goods and services. Benefits to you: Pinpoint the most relevant “nuggets.” Identify conflicts up front, before investing in a brand. Help prevent potential costly and time-consuming litigation.
  14. INTELLIGENCE IN ACTION: EXAMPLE Trademark searched: SUPERTEK Classes searched: 9, 45 Observations: Two-word mark Alternate spellings (phonetic identicals) Relevant synonyms Dominant terms: Super, Tek (Tech) Search terms: Supertek SuperTech Good Tek/Tech Quality Tek/Tech Super Techno/Tekno
  15. EXPERIENCE EQUALS INSIGHT Our research analysts are among the most experienced in the industry. Average 18 years of trademark research experience. Deep familiarity enables a more informed approach. Many have advanced degrees. 6 months of rigorous training, ongoing mentoring and education. They have the expertise to anticipate how your brand will be used–key to uncovering pertinent marks.
  16. SEARCH ANALYST PROFILE Name: Laurie Quintiliani Education: BA English, University of New Hampshire Years of experience: 18 Specialized expertise: Expert at identifying word variations, tense, synonym terms, play on words, etc. – a unique ability that she honed while pursuing her English degree. “The best part of my work is uncovering an obscure trademark finding that enables a client to avoid a major legal headache. That’s worth all the extra effort we put in.”
  17. GOING THE EXTRA MILE 1 2 3 4 5 Our Five-step Team Approach: Advisor Analyst develops custom pre-search strategy. Queries focus on dominant term(s) to pinpoint relevant findings. Search Analyst runs, revises and refines queries. Search Analyst selects the most relevant findings, based on visual, phonetic and conceptual similarity. Quality Team checks final reports. Benefits to you: More expert eyes = greater ability to pinpoint pertinent marks Advise your clients with confidence, knowing your opinions are backed up by thorough research
  18. ANTICIPATING CLIENT NEEDS “When I send in a search request, [my Thomson CompuMark search analyst] often will provide suggestions for enhancing my search, which I never would have thought to ask for. That’s very helpful.” – Full Search Client
  19. SUCCESS FACTOR TARGETED common law COVERAGE
  20. COMMON LAW: AN EXPANDING UNIVERSE [VISUAL: Can we show all types of common law sources: magazines, newspapers, business publications, directories, etc.?] In a world with MORE information,how can you pinpoint the RIGHT information?
  21. SOLUTION: QUALITY COMMON LAW CONTENT Our proprietary Common Law database offers uncommon: Freshness We continually update information to ensure accuracy. RelevanceWe routinely add new cutting-edge sources of trademark information. Reach Thousands of industry and business sources from 250 suppliers.General and targeting specific goods. CompletenessIncludes owner and company information. Benefits to you: Identify confusingly similar marks that could be missed by more limited searches. Confidence that decisions are based on up-to-date information from relevant sources.
  22. DON’T FORGET THE WEB 8,200,000,000 (that’s billion) web pages and counting… Imagine how many brands are represented on those pages. If you’re missing the web, you’re missing one of the most important global sources for trademarks. (Source: http://www.worldwidewebsize.com)
  23. SOLUTION: WEB INTELLIGENCE Use same query system for web common law as for USPTO and State searches. Analysts identify the most important trademark elements Focus on goods terms associated with the mark. Cited terms on web pages are clearly indicated. Custom web search solutions are our specialty. Benefits to you: Receive targeted web findings and consistent results. Minimize the number of hits to review, saving you time.
  24. WEB ANALYST PROFILE Our Web Analysts have trademark research expertise plus web research experience. [VISUAL: Photo of actual TCM Web Analyst] Name: Jorge Chacon - details to follow Education: ????? Years of experience: ????? Specialized expertise: ?????
  25. SOLUTION: WEB SEARCH EXTENSIONS Thomson CompuMark exclusive Add targeted trademark-rich websites for 45+ industries. Have web sites you’d like to target?We can include them. Benefits to you: Deep, industry-specific web coverage—uncover relevant marks that otherwise could be missed. See how trademarks are used on the web—mitigating risk and deepening your understanding the competitive environment
  26. SUCCESS FACTOR STREAMLINED REPORTING AND ANALYSIS
  27. YOUR DAILY CHALLENGE How can you get more done in less time?
  28. SOLUTION: ANALYSIS TOOL ON SERION® The Analysis Tool streamlines your entire trademark workflow: Benefits to you: Make more informed decisions in less time, with less effort. Spend more valuable time advising clients. Access information faster, reducing wasted time.
  29. USERS LOVE THE ANALYSIS TOOL 91% 92% Results of recent Customer Satisfaction survey: overall satisfaction would recommend the Analysis Tool “Availability search reports are often quite long and I need to be able to pare them down quickly and efficiently. I also need to be able to communicate those results to colleagues or clients in a very clear and concise manner. The Analysis Tool helps me do both better than before.” “Before using the Analysis Tool, there was much more effort involved in creating reports.Now, I just export the data and it’s virtually ready to go.”
  30. SUCCESS FACTOR Expert, PERSONALIZED SUPPORT
  31. TECHNOLOGY + PEOPLE Technology is great… ….but so is personal service from real experts.
  32. SOLUTION: EXPERTISE ON TAP Have a question or a special search request? Knowledgeable Representatives a phone call or email away Online chat support Need help making the most of our online tools? SERION Training Seminars SERION Certification Program – industry first 32
  33. EDUCATIONAL RESOURCES Your “go to” source for the latest industry news and insights. Webinars, videos, podcasts Newsletters In-depth special reports covering important IP topics
  34. BIG CHALLENGES ARE NO BIG DEAL No order too big Large search requests Exceptional at tight deadlines Guaranteed delivery times We love special projects Work with you to meet specialized needs Custom solutions for any search challenge
  35. SPECIAL REQUESTS OUR SPECIALTY Example: After Hours Assistance Client need: Called at 6:30 p.m. Order: Ten 4-hour searches with Web Search Extensions. Our response: Business as usual. We identified the analysts and filled the order. Result: Client was able to keep trademark launch on schedule.
  36. FIVE SUCCESS FACTORS, ONE PARTNER Thomson CompuMark delivers: Data quality and accuracy Intelligent search strategies Targeted common law coverage Streamlined reporting and analysis Expert, personalized support We turn complexity into clarity. 1 2 3 4 5

  37. THANK YOU

    TRADEMARKS.THOMSONREUTERS.COM IP.THOMSONREUTERS.COM 37
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