The shifting world of trademark search

19-05-2018

Benoit Fallenius

The shifting world of trademark search

PinkyPills / iStockphoto.com

Technology is changing the face of the trademark search industry, and law firms and brand owners need to keep pace with the developments, says Benoit Fallenius of Markify.

The trademark search and watch practice is changing with increasing speed in trademark-focused law firms and in-house practices. This has been happening for a while but the pace is picking up.

Trademark search used to be a manual practice, largely dependent on the person creating the search query. Today the search query can be created by statistically-built algorithms, which will also rank the results and limit the ’noise’.

Time can instead be spent on qualitative analysis and on the client relationship. The focus is shifting to the actual added value provided by the law firm, which is of course good for both law firm and client. Three driving forces are behind this change.

Cost pressure from the law firm clients

Small and large clients are increasingly sensitive to excessive trademark search and watch costs. New brands are expected to be created and cleared quickly, at a fraction of what it cost before, but with retained quality. As a consequence, law firms no longer sign three-year, costly contracts with the search provider. And waiting three days for a full search report is often not an option.

Free searches powered by patent and trademark offices  

Law firms and brand owners are switching their identical and simple fuzzy searching to free alternatives. Why sign a three-year contract and pay a lot for something that patent and trademark offices offer for free?

"Trademark search providers have been forced to offer something else, something more intelligent, and more efficient."

Trademark search providers have been forced to offer something else, something more intelligent, and more efficient. But not all of them have been able to deliver solutions that are both innovative and cost-effective.  

New, technology-driven trademark service providers

Technology is increasingly changing the whole legal field, and especially the trademark search/watch practice.

The impact from technology-driven companies such as Markify is both deep and broad on what the law firm and brand owner can expect:

  • Better accuracy: An algorithm like Markify’s can deliver better search/watch results than any human.
  • Fast delivery: A full trademark search report no longer requires days to deliver. It can be done in seconds or minutes.
  • Easier workflow: Statistical ranking and smart online tools let the trademark professional save time and focus on the qualitative analysis.
  • Price: With new technology, advanced trademark search/watch services can be delivered at a fraction of the price. This is because the algorithms and technology do the heavy lifting instead of people. Example: a US full search used to cost $750—now it is down to $130.

Who will be the winners in this shifting landscape?

There are at least two clear winners. Law firms that shop around for new tools will have an edge. They will have the best and most cost-effective tools and will be able to serve their clients better.

The other winners are the brand owners who are demanding and observant on their total spend.

They will get better services at a lower price. 

Are there any losers? Law firms and brand owners who are not researching whether the new tools can give them a better and more efficient way of working.

 

Five questions to ask your trademark
search provider

The secret behind all good research is posing the right questions. Here are a few key questions to ask your current or potentially new provider of trademark search and watch services.

Q1: How can you help us cut our total costs for search and watch?

The calculation should take into account:

  • Time spent on creating search queries.
  • Time spent on analysing results.
  • Time spent on compiling reports.
  • Time spent because our search system missed conflicts.
  • Current costs for ID, fuzzy and full searching/watching.
  • Comparison with automated high-quality solutions.

Q2: How can you help me deliver a better service to my clients? 

The analysis should take into account:

  • Can we avoid office actions that are harming the client relationship?
  • Can reports be delivered faster to clients?
  • Can our clients pay more for qualitative analysis versus spending on search reports?

Q3: How can your tools make our work easier?

A few questions to drill down:

  • Are the tools intuitive, easy to use?
  • Are the tools adaptable to our work-flow and flexible to our needs?
  • Is the data accurate, is it the right data, is it comprehensive and presented in a logical way?

Q4. How can you help me grow my business?

Is the pricing reflecting the fact that it is algorithms and technology behind the search
and not humans? More specifically:

  • Grow new clients: How can I reach a new a range of clients that could not afford us before?
  • Grow existing clients: How can I get more work from existing clients?

Q5: How flexible is our deal?

In a fast-moving business landscape, deals must be flexible:

  • Can we for any reason terminate our contract at any point or are we stuck for years?
  • Can you tailor your service to our needs?
  • If my volume drops, will my price be lowered?
  • If my volume increases, will my discounts increase?
  • Are you open for new development projects?

 

Benoit Fallenius is the founder and CEO of Markify, a technology-driven company providing trademark search and watch services. Markify was established in 2010 and today serves a large number of trademark law firms and brand owners in the US, EU and Asia. He can be contacted at: benoit@markify.com

Benoit Fallenius, Markify, trademark services, IP service provider

WIPR