Category: IP Strategy

There are many different types of freedom to operate or product clearance issues in respect of which we can provide strategic assistance to clients. Most every business decision is driven on some level by a desire to minimize risk, and technology or IP driven projects are no different – business people conducting due diligence during the course of any number of different types of business activities may wish to secure opinion or strategic advice in terms of whether or not a particular business idea would infringe upon the rights of other parties in the marketplace such that there would be an infringement risk that needed to be factored into the decision matrix.

In the case for example of a new product or service, you may wish to conduct a search to ensure that you are free to manufacture or sell that product in the marketplace in comparison to other available products, or in comparison to the patent positions of third parties for example. Varying types of freedom to operate opinions and searching can be conducted to provide differing levels of comfort or different risk assessments dependent upon the markets in question, and the more specific nature of the business risk needing to be managed.  Often at the beginning of a technology development project it may be the case that freedom to operate is considered in the context of patentability for example although the issues are not entirely the same – we are happy to provide further guidance or assistance on this as required.

An extension to validity and freedom to operate opinion work is that if a situation is identified in which  a business believes that they may potentially infringe the intellectual property rights of a third party, they may wish to secure strategy or advice regarding appropriate steps which could be taken to design around the IP rights which have been identified as problematic. design around opinion or analysis is another area atin respect of which we can provide assistance.

Get in touch today to learn more about product clearance and freedom to operate opinions.

Conducting trademark and brand clearance prior to adopting desired branding can be an invaluable investment. Consider the following situation.

You have selected a new trademark to use for your business. You hired a marketing company to develop a new brand identity based on that trademark and have spent $150,000 printing material, developing a website and otherwise launching your product or service into the marketplace in three countries. You receive a cease-and-desist letter from a lawyer indicating that his client has previous rights to the use of that name in the market on the products and services of your company, alleging that you are infringing his client’s trademark rights and making various demands. Surely this must be a mistake – you call the marketing people to find out if a search was conducted or otherwise if steps were taken to minimize the risk associated with this type of a scenario and find out that either nothing or very little was done following the selection of the attractive trademark to ascertain its legal availability for your purposes in the markets of question. Now what?

Once you have selected a new trademark it is important to conduct trademark and brand clearance through a trademark search to understand if there are problems in the marketplace which could inhibit your launch or adoption.  The two key items which we can consider in the preparation of a trademark search are the registrability of the trademark, that is to say whether or not the trademarks office in the country in question would have any issue with the granting of a trademark registration in respect of a particular proposed trademark, and whether there are any issues with the adoptability of the trademark in that marketplace. Adoptability is such a key issue since in many cases it may be possible to obtain a registration based on the status of the federal trademark register in the country in question, but there may be unregistered trademark rights in that marketplace which create the infringement or adoption risks which a client should know about in advance of finalizing their strategy.

It is possible for trademarks to coexist in the marketplace if they are used in different channels of trade and so to the extent that other trademarks exist that are visually or orally similar to your own potential trademark knowing the channel of trade in which you propose to use it is important.  Different types of trademark searches can be conducted for different purposes.  Consideration of adoption and infringement risks is a very important layer of diligence, in addition to a registrability analysis, so that you do not seek to register a trademark or brand that would necessarily cause confusion and potentially infringement liability on your part vis-à-vis a third party in the marketplace.  Even though a trademark may be registrable, there may be common-law usages or other competing positions in the marketplace which, as a result of their status, may pose a problem in terms of a previous use or priority position in the marketplace in your channel of trade.

In addition to assisting with specific trademark and brand clearance searches and projects, if you have a company that has a significant ongoing marketing function in which regular clearance strategies are regular clearance searching is required we can assist you with the implementation of the necessary workflow steps to ensure that appropriate clearance steps are identified and taken at the right time in your internal business work process.