Conflict research. Do not infringe on older rights.
The naming process results in concrete name suggestions. During the creative and evaluation phase — that is, the analysis of the names according to aspects of trademark rights, language, and Internet and specific domains — as a naming agency, we subject the names to international conflict research and trademark research tests for pure identity or, alternatively, for phonetic identity. At an early stage in the naming process, this helps to avoid overlap with existing brands in the same classes of goods worldwide.
As soon as one or more names stand firm as favorites after the presentation, we recommend deeper conflict research. This evaluation provides an overview of the same, similar, and related names within and outside of the respective relevant classes of goods for the chosen target countries. This intensive legal trademark conflict research provides you with a degree of certainty about your decision of over 75 percent.
Four types of research
Identity screening research
During worldwide identity screening research, the new brand name is compared to existing word marks for identity and phonetic identity with respect to possible conflicts with older rights. This is possible around the globe in over 200 countries/registries. The goal: Beyond the previous research, eliminate name ideas which are could no longer available. Identity screening research is relatively cost-effective.
Identity research is an investigation of existing word marks for identity or phonetic identity with comprehensive remarks on the matches; that is, on the owners of the trademarks. Identity research as a form of conflict research is ideal for checking selected brand names in a limited number of countries.
Similarity research for word marks
Similarity research compares and checks name ideas with existing word marks for phonetic and conceptual similarity in selected countries. In this case, during conflict research and brand research, besides phonetic similarities, various spellings and word orders are investigated. The results include thorough remarks on the matches, trademark owners, classes of goods, and the descriptions. This word mark research can be conducted by region or in a targeted fashion for individual countries. Similarity research gives a deeper look. Experienced analysts judge possible relevant matches with regard to a possible conflict. In addition, the results are to be judged by a trademark attorney. This time-consuming and costly investigation makes sense whenever establishing and developing the brand is to begin before the trademark is officially registered.
Similarity research for logos (figurative marks)
Once the name is found and possibly registered, the trademark, or brand name, needs to become an image. More precisely, it needs a logo. What is valid for the word (mark) in terms of trademark rights is also valid for the figurative mark. The figurative mark, or the combined word and figurative mark, when it is designed, should be subjected to similarity research in order to avoid conflicts. This is, however, a bit more complicated. The Vienna Classification is to be observed. From graphics and physical representations to abstract representations, the Vienna Classification is ordered into 28 main sections and hundreds of categories, divisions, and sections. Checking existing trademarks for visual similarities in selected countries can be helpful when deciding on a logo.
Does it make sense or not?
All forms of conflict research and trademark research provide a high degree of assurance regarding the decision for a brand name and the registration of the brand (trademark). Are there identical matches or critical matches? Will the mark be contested? When this is not the case, conflict research brings you an advantage in time, as you can start immediately with the work on the logo and on the corporate design of the brand. There is usually not enough time to wait until the registration is processed on the national, European, or international level.
Legal experts at your side
The legal aspects of registering and enforcing a trademark (brand name) are extensive. In the naming agency, we regularly work in this field together with the legal departments of our clients or with their trademark attorneys. Interfaces have to be clearly defined in this respect. If the customer has no trademark attorney, we have a partner at our side. The evaluation of the research is taken on by, as a rule, Lausen Attorneys (Lausen Rechtsanwälte) with website address www.lausen.com. Lausen is well-known and specialized in trademark law, with offices in Munich, Cologne, and Hamburg. For years, we have worked together successfully with Lausen Attorneys on many naming projects.