A Comprehensive Guide to International Trademark Searches

Imagine you've built your brand or business for years, only to wake up one day and find you've been served with a cease-and-desist letter. The letter says someone else owns the right to use your brand's name.

This situation happens more often than you think. The truth is that there have been thousands of expensive legal battles, forcing others to rebrand.

So, in this article, we'll walk you through the process of an international trademark search to ensure that you protect your brand globally. This process will ensure your brand stands out everywhere.

What is a trademark search?

A trademark search means checking records of current trademarks before you register your own. This helps you find out if any marks, slogans, or symbols are similar to what you want to use. 

You'll need to search through databases to spot any lookalikes. This way, you can see if your logo or signs can be registered or if they need changes to avoid issues. 

The United States Patent and Trademark Office (USPTO) states that a complete trademark search can lower your chances of getting a cease-and-desist letter or facing legal problems later on.

Types of trademark searches

Various types of trademark searches exist, and each is tailored for different purposes. The multiple levels provide differing amounts of attention to detail.

1. The international search/global search

Our focus in this article will be the international trademark search, which is conducted if you need to expand your business to have a global reach.

It involves checking international trademark databases. This includes the World Intellectual Property Organization (WIPO) and the European Union Intellectual Property Office (EUIPO).

Another aspect of the international search is the country-specific search. This focuses on individual countries where you plan to sell your goods or services. 

2. Preliminary search

Also called knockout search. It's the first search to check if there are any obvious conflicts with the trademark you wish to register. It involves investigating databases that are readily available, like the USPTO and Trademarkia. 

This search is important but isn't very deep. You're likely to miss some less obvious infringements if you solely depend on it. 

During the preliminary search, you should also check the web and social media for similar names, logos, or slogans.

3. Comprehensive search

Here, your trademark search has progressed to examine more intricate details. It includes going through the following: 

National trademark database: This search starts by checking for similar trademarks at the national level. In the US, the USPTO comes in handy. If you're within the European Union, the EUIPO can be used. Other countries in the world have local intellectual property offices and databases that can be scanned at this stage. 

Regional trademark database: Here, the scope has widened from national to start checking for identical or conflicting trademarks from nearby countries or regions. 

Business names and domain names: This is a look for domain names and names of businesses that might not be trademarked already but pose an infringement risk.

Common law trademarks: Here, unregistered trademarks that are protected under common law are checked. Common law protection means that you have trademark rights even if you haven't registered a trademark (due to use in commerce). 

Where can you do common law checks? 

Before adopting a trademark, it's important to conduct common law checks to ensure it isn't already in use. Below are some key places you can perform the checks:

• Internet search using search engines like Google, Mozilla, or Bing to look for products or services using the same or similar names. 
• Business directories like the Yellow Pages and even local chambers of commerce.
• Scour social media platforms like LinkedIn, X, Instagram and Facebook.
• Trade publications and industry databases which have directories where businesses advertise.

How to do a comprehensive trademark search

After you have created a slogan, logo, or brand name, you need to check for conflict: 

Look for an appropriate trademark database 

In the US, the USPTO is one of the primary sources to start your search. It maintains a detailed database of registered trademarks in the US and has a Trademark Search Tool, which, apart from providing details of registered trademarks, also shows pending applications. 

If you want your trademark to have international recognition, you should search the Global Intellectual Property Organization database as well as country-specific intellectual property databases. 

Commercial trademark databases also exist. They are usually paid and offer more advanced search features. These databases provided more detailed and comprehensive reports than free alternatives.

Identify search strategy 

When formulating a search strategy, you need to consider the following:

• Determine relevant class: You'll need to classify your goods or services according to the Nice Classification system. This helps narrow your search for trademarks in related or similar classes. 
• Check keywords: You need to record all the key phrases related to your trademark. Check for misspellings, synonyms, and even phonetic equivalents:  For example, let's say you want to trademark the word EcoFresh for a product like an air freshener. There may be certain keywords such as Eco, Organic, Green, and Fresh. There may also be variations such as Eco-Fresh, FreshEco, and EcoFreshly. Misspellings or phonetic equivalents, including EkoFresh, EchoFresh, and Ekofresh.
• Search filters: Use filters to narrow your search. You can filter by status, owner name, and registration date.

Conduct the search

After your strategy is refined and ready, it's now time to conduct the actual search. The initial stage includes starting your international trademark search with a global database. Pay close attention to similar trademarks, and not just identical ones.

Advance to national and regional databases 

Next, you need to identify the regions or countries that will be most relevant to your business. 

Take into account the possibility of future expansion. Take advantage of the WIPO portal to access individual country databases. Different countries have different criteria for trademark registration and protection.

Analyse your international trademark search results

Once the search is complete, it's now time to make sense of the results. This process involves evaluating similar or existing marks and assessing if there is a likelihood of confusion and conflict. 

The database will also show if the marks are registered, pending, or expired. Understanding the implications of this to your brand, especially if there is a risk of conflict, is important. Intellectual property attorneys can advise in such situations to reduce vulnerability and risks.

Document findings 

After the search is done, and just like in any other type of research, findings need to be recorded. The findings need to be well documented, outlining any potential conflicts that have been identified. 

This stage is important because it shows due diligence for legal issues. It also guides branding efforts clearly.

Take into account the Madrid Protocol 

The Madrid Protocol allows you to register international trademarks with one application. This works only if the countries are part of the protocol. It reduces costs, ensures the processes are simplified, and allows efficient management of international trademark portfolios.

Get professional assistance 

It's evident that registering an international trademark is not a walk in the park. Our experienced trademark attorneys can advise you each step of the way as they're well-versed in trademark law. 

Our attorneys can help in searches and help you navigate the application process by ensuring all your paperwork is correctly done. In case the search shows the potential for conflict, our IP attorneys can also advise on the best next course of action. 

International trademark search blunders and how to avoid them

Conducting a trademark search is a crucial step toward protecting your business. But this process is long and sometimes tedious, and as such, it's easy to make costly mistakes.

He's a quick guide to the most common blunders and how to avoid them:

• Skipping the search: Most people may want to avoid this phase and just hope for the best. But let's face it: failure to search opens the floodgates to potential trademark infringements. Trademarks can cost you more in legal suits than the cost of searching. 
• Limiting your search: You need to explore all available registries. Check national, regional, and state registries. Also, check the common law rights. Common law protects trademarks not formally registered. You will need to check for businesses using a similar mark to what you want to register. Also, check if your proposed trademark has already been taken by businesses with pending trademark registration status. Utilize all tools: free online searches, government registries, manual online searches, and private paid search engines.
• Ignoring similar marks: Yes, your mark isn't identical to the one you have found during your search, but don't ignore this. Similar marks confuse consumers and can be a cause of you being sued for infringement. 
• Don't over-depend on free tools: International trademark searches aren't cheap. Yes, there are free tools, but we all know free tools have limitations. On the other hand, paid tools offer more comprehensive results and analysis. 
• Failure to consider future business expansion: Choose a trademark with vision. This is key if your business can grow significantly. 
• Misinterpreting search results: If you're unsure of the implications of a trademark search result, it's important to seek professional help. Misreading the findings can expose you to trademark infringement. 
• Focusing on registered trademarks alone: You need to remember that even unregistered trademarks are protected by common law. Also, check for trademarks with a pending status.

Why is international trademark searching important? 

Conducting a trademark search is an important procedure for any business or brand for several reasons:

• Avoid legal conflicts: Legal battles are expensive and can eat into the profits of a business or cause customers to doubt the credibility of a brand. Searching ensures you avoid infringing on another person's trademark, which is an offense.
• Protects brand identity: Ensuring your trademark is unique boosts confidence and distinctiveness. This also strengthens your market presence, which helps build customer loyalty and brand recognition.
• Saves time and money: When potential conflicts are discovered early enough, you have a chance to make necessary adjustments to your trademark. This can also save a business money and avoid investing in branding using colors or signs that infringe on another business's trademark.

An example here is when Paris-based fashion brand Louis Vuitton filed a case against a South Korean fried chicken restaurant named Louis Vuitton Dak. The restaurant used packaging that was similar to the ones used by the luxury brand. The court ruled that the restaurant had infringed the trademark of the fashion brand. Louis Vuitton Dak changed the name to LOUISVUI TONDAK, a decision that further angered the court, leading to penalties. 

One more benefit of trademark searching is that it boosts your chances of getting a trademark registered. The USPTO and other trademark agencies are more likely to approve your application if no conflicting trademarks are registered.

Can I do a trademark search myself? 

Doing an international trademark search yourself isn't impossible. Using tools like international trademark databases can be complex. You need to understand both local and international trademark laws. It's also important to interpret search results correctly. So, getting help is essential.

This is where trademark attorneys come in. We help with searches, interpreting findings, and filing the application, and we can also represent you in case of an infringement.

How much does it cost to do an international trademark search? 

A basic trademark search can be done for free on some free database tools and registries. For example, Trademarkia offers a basic trademark search for free.

However, if you want a comprehensive search, you will have to pay a premium. This fee will guarantee you a detailed search and other things like risk assessment on a global basis.

Protect your brand globally with a smart trademark search

Don't let preventable legal issues derail your hard-earned success. Your first line of defense in safeguarding your business across borders is a trademark search.

With Trademarkia's expert services, you can easily navigate the complexities of global trademark law and trademark registration. It's time to let Trademarkia help you secure your brand because your business deserves protection that is beyond borders.

Additional resources

• 4 Reasons You Need International Trademark Protection
• 10 Reasons Why Trademarks Are Important for Your Brand
• Comprehensive Trademark Searches: Are They Worth It?

Glossary of legal terms

• Cease-and-desist letter: A formal legal document sent to an individual or business to stop an alleged illegal activity, such as trademark infringement. Failure to comply may result in legal action.
• United States Patent and Trademark Office (USPTO): The federal agency responsible for granting patents and registering trademarks in the United States.
• Trademark: A symbol, word, phrase, logo, or combination that is legally registered for use and could represent a company or product, distinguishing it from others.
• Intellectual property (IP): A category of property that includes intangible creations of the human intellect, such as trademarks, copyrights, and patents, which are legally protected.
• Common law trademark: A trademark that is protected by law based on its actual use in commerce, even if it is not registered with a governmental or any known trademark authority.
• Nice Classification: An international system used to categorize goods and services for the purposes of registering trademarks, helping to ensure accurate and organized searches.
• Madrid Protocol: An international treaty allowing businesses to seek trademark protection in multiple countries through a single application.
• Trademark infringement: The unauthorized use of a trademark on competing or related goods and services, leading to confusion, deception, or misunderstanding among consumers.