CLEARING U.S. TRADEMARKS: FIVE SEARCH SUCCESS FACTORS JANUARY
1, 2012
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MITIGATING BRAND RISK: FULL SEARCH 2
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Form opinions Make decisions with Advise clients with FIVE
SUCCESS FACTORS Data quality and accuracy Intelligent search
strategies Targeted common law coverage Streamlined reporting and
analysis Expert, personalized support 3 1 2 3 4 5 CLARITY CERTAINTY
CONFIDENCE
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DATA QUALITY AND ACCURACY SUCCESS FACTOR 4 1
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5 NOBODYS PERFECT: USPTO ERRORS How common are errors in USPTO
records? error rate overall device code error rate On average,
thats about ??# errors per week. 5 3% 4.5%
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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
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7 Applicant: MillionDollarLiving.com Mismatch between logo
(real estate company) and JAAB mark (boxing equipment) MILLION
DOLLAR CORRECTION
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8 Actual record from PTO TARR USPTO entry: PAY ANY WAY
NECESSARY $ Our correction: addition of the word PAWN in the
record. PAWNING OFF ANOTHER ERROR
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9 MASS MISMATCH Trademark mismatch error MDC 2 = Design only
TMK should be Mass Hysteria Entertainment (MDC=3) word &
design
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10 CORRECTING STATE DATA Trademark record from Connecticut Our
correction: changed description to P for Piccar. Applicant: PICCAR
Homes State database description: double L
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INTELLIGENT SEARCH STRATEGIES SUCCESS FACTOR 11 2
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FULL SEARCH IQ TEST 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. 12 1 2 3 4
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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. 13
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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 14
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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 usedkey to uncovering
pertinent marks. 15
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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. Thats worth all the extra effort we
put in. 16
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GOING THE EXTRA MILE 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 17 1 2 3 4 5
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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. Thats very helpful. Full Search Client
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TARGETED COMMON LAW COVERAGE SUCCESS FACTOR 19
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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? 20
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SOLUTION: QUALITY COMMON LAW CONTENT 21 Our proprietary Common
Law database offers uncommon: Freshness We continually update
information to ensure accuracy. Relevance We routinely add new
cutting-edge sources of trademark information. Reach Thousands of
industry and business sources from 250 suppliers. General and
targeting specific goods. Completeness Includes 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.
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DONT FORGET THE WEB (thats billion) web pages and counting
Imagine how many brands are represented on those pages. If youre
missing the web, youre missing one of the most important global
sources for trademarks. (Source: http://www.worldwidewebsize.com)
22 8,200,000,000
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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. 23
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24 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: ????? WEB ANALYST
PROFILE
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SOLUTION: WEB SEARCH EXTENSIONS Thomson CompuMark exclusive Add
targeted trademark-rich websites for 45+ industries. Have web sites
youd 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
webmitigating risk and deepening your understanding the competitive
environment 25
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STREAMLINED REPORTING AND ANALYSIS SUCCESS FACTOR 26
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YOUR DAILY CHALLENGE 27 How can you get more done in less
time?
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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. 28 SOLUTION: ANALYSIS
TOOL ON SERION The Analysis Tool streamlines your entire trademark
workflow:
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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 its virtually
ready to go. 29 USERS LOVE THE ANALYSIS TOOL 91% 92%
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EXPERT, PERSONALIZED SUPPORT SUCCESS FACTOR 30
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31 TECHNOLOGY + PEOPLE Technology is great .but so is personal
service from real experts.
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32 SOLUTION: EXPERTISE ON TAP 32 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
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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
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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
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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.
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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
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THANK YOU TRADEMARKS.THOMSONREUTERS.COM IP.THOMSONREUTERS.COM
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