Conducting searches for prior trademark registrations is one of the most important steps to take before submitting an application for registration with the Trademark Office. Searches involve looking for and identifying signs that are the same or similar to that which the client intends to register, also considering that the owners of those prior signs might consider opposing the registration of the client’s trademark.
Advice on registration options generally takes the form of an opinion on registerability: following prior registration searches, Jacobacci & Partners can assess whether the client’s mark meets the requirements for registration, including whether it is potentially invalid (and therefore not capable of being registered) and whether there exist registered trademarks that may conflict with the proposed sign. Considering all available information, our professionals are then in a position to recommend a solution that best fits the client’s needs.
Together, these services constitute a fundamental preliminary step on the path to obtaining a trademark that a client can utilize as a business asset in the future. Carrying out both activities correctly and promptly is key to the successful launch of a brand on the market, and to the business that derives from it. As this is even more true on the international market, we at Jacobacci & Partners do not limit ourselves to Italian and European research, but are in a position to expand our search areas to all countries of interest, including a careful review of websites with domain names may be the same or similar to the trademark the client intends to register.
Choosing to not perform priority searches, or performing them without the help of professionals that have access to large databases and in-depth knowledge of the subject, presents several risks. The most serious of these risks is the potential to be accused of acts of infringement and becoming the target of legal or administrative proceedings by third parties that own an earlier trademark. Such a scenario runs the risk of compromising not only the trademark but also the entire business plan that has been built around the brand.
