Once you have selected a new trademark it is important to do a 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 – the three different types of searching that we would most often conduct to identify these types of issues are as follows.
Primary purpose: Initial market scan
A search of this nature is intended to focus around identifying trademarks that are either identical in spelling or very similar in spelling, with limitations to the channel of trade which is included in the search. The knockout search will typically comprise a search across all channels of trade for identical spellings and a limited number of additional queries with modifications in the search terms to cover similarly spelled trademarks and other trademarks of interest within the channel of trade. The queries that are used in the knockout search are computer generated and so there is not quite the same amount of depth in the search as a complete register search outlined below, but if what you are really after is a snapshot of the state of the trademark register and how any items in the register might affect the registrability of your proposed trademark, this is oftentimes a good way to start.
Primary purpose: Understand registrability of the trademark
The next option which is available in terms of assessing the registrability of a trademark is to conduct what we would refer to as a complete “register search”. A register search, as inferred by its moniker, still comprises a search of the Canadian trademark database to identify any trademarks which might be relevant to the registrability of your proposed trademark within your channel of trade. The primary difference between a register search and a knockout search is that the query strategy on the register search, as well as the analysis and generation of the opinion, is done manually rather than by the summary auto-generation type of a search which is used in a knockout. The queries which will be executed in the preparation of a complete register search such as this will include the necessary queries to cover any trademarks of similar connotation but different spelling, or looking for roots and constituent elements of the proposed trademark and other trademarks within the channel of trade, spelling variations etc. the opinion that we will provide on this type of a search will be a legal opinion as to the registrability of your proposed trademark over the contents of the search report.
Primary purpose: Understand registrability as well as adoption risks, if any
The final type of search which we can conduct we refer to as a comprehensive search as it encompasses more sources with a view to providing you with an opinion not only as to the registrability of the trademark [to which pending applications and issued trademark registrations are relevant items] but also to provide you with an opinion as to the existence of any infringement or adoption risks in the marketplace beyond registrability. The circumstance that this type of a search is intended to minimize is the one where there may not be any impediment to registrability on the Canadian register and on that basis we may be able to provide a clear opinion on registrability, but there may be one or more infringement risks in the marketplace by virtue of someone else having a previous use of a similar trademark on the same channel of trade that is not registered, or something along those lines.
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 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.