clearing u.s. trademarks: five search success factors january 1, 2012

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  • Slide 1
  • CLEARING U.S. TRADEMARKS: FIVE SEARCH SUCCESS FACTORS JANUARY 1, 2012
  • Slide 2
  • MITIGATING BRAND RISK: FULL SEARCH 2
  • Slide 3
  • Form opinions Make decisions with Advise clients with FIVE SUCCESS FACTORS Data quality and accuracy Intelligent search strategies Targeted common law coverage Streamlined reporting and analysis Expert, personalized support 3 1 2 3 4 5 CLARITY CERTAINTY CONFIDENCE
  • Slide 4
  • DATA QUALITY AND ACCURACY SUCCESS FACTOR 4 1
  • Slide 5
  • 5 NOBODYS PERFECT: USPTO ERRORS How common are errors in USPTO records? error rate overall device code error rate On average, thats about ??# errors per week. 5 3% 4.5%
  • Slide 6
  • 6 SOLUTION: DATA QUALITY CHECKING Our Data Quality Team: Checks every single USPTO record Manually corrects errors, often within days Enters corrected records into our proprietary database Benefits to you: Your advice is based on accurate data Identify potential conflicts that might otherwise be missed Minimized risk of unforeseen infringements
  • Slide 7
  • 7 Applicant: MillionDollarLiving.com Mismatch between logo (real estate company) and JAAB mark (boxing equipment) MILLION DOLLAR CORRECTION
  • Slide 8
  • 8 Actual record from PTO TARR USPTO entry: PAY ANY WAY NECESSARY $ Our correction: addition of the word PAWN in the record. PAWNING OFF ANOTHER ERROR
  • Slide 9
  • 9 MASS MISMATCH Trademark mismatch error MDC 2 = Design only TMK should be Mass Hysteria Entertainment (MDC=3) word & design
  • Slide 10
  • 10 CORRECTING STATE DATA Trademark record from Connecticut Our correction: changed description to P for Piccar. Applicant: PICCAR Homes State database description: double L
  • Slide 11
  • INTELLIGENT SEARCH STRATEGIES SUCCESS FACTOR 11 2
  • Slide 12
  • FULL SEARCH IQ TEST Does the search: Look at all elements of a mark to identify all possible similarities? Distinguish the dominant terms or elements in the mark? Analyze search data in multiple ways to reduce irrelevant hits? Employ a search strategy customized to your specific needs? Answering YES increases chances of identifying key findings. 12 1 2 3 4
  • Slide 13
  • SOLUTION: SEARCH WITH INTELLIGENCE Our experienced search analysts: Determine which term or element is dominant. Take into account all elements of the mark. Dissect data in multiple ways. Target results most relevant to your goods and services. Benefits to you: Pinpoint the most relevant nuggets. Identify conflicts up front, before investing in a brand. Help prevent potential costly and time-consuming litigation. 13
  • Slide 14
  • INTELLIGENCE IN ACTION: EXAMPLE Trademark searched: SUPERTEK Classes searched:9, 45 Observations:Two-word mark Alternate spellings (phonetic identicals) Relevant synonyms Dominant terms:Super, Tek (Tech) Search terms:Supertek SuperTech Good Tek/Tech Quality Tek/Tech Super Techno/Tekno 14
  • Slide 15
  • EXPERIENCE EQUALS INSIGHT Our research analysts are among the most experienced in the industry. Average 18 years of trademark research experience. Deep familiarity enables a more informed approach. Many have advanced degrees. 6 months of rigorous training, ongoing mentoring and education. They have the expertise to anticipate how your brand will be usedkey to uncovering pertinent marks. 15
  • Slide 16
  • SEARCH ANALYST PROFILE Name: Laurie Quintiliani Education: BA English, University of New Hampshire Years of experience: 18 Specialized expertise: Expert at identifying word variations, tense, synonym terms, play on words, etc. a unique ability that she honed while pursuing her English degree. The best part of my work is uncovering an obscure trademark finding that enables a client to avoid a major legal headache. Thats worth all the extra effort we put in. 16
  • Slide 17
  • GOING THE EXTRA MILE Our Five-step Team Approach: Advisor Analyst develops custom pre-search strategy. Queries focus on dominant term(s) to pinpoint relevant findings. Search Analyst runs, revises and refines queries. Search Analyst selects the most relevant findings, based on visual, phonetic and conceptual similarity. Quality Team checks final reports. Benefits to you: More expert eyes = greater ability to pinpoint pertinent marks Advise your clients with confidence, knowing your opinions are backed up by thorough research 17 1 2 3 4 5
  • Slide 18
  • 18 ANTICIPATING CLIENT NEEDS When I send in a search request, [my Thomson CompuMark search analyst] often will provide suggestions for enhancing my search, which I never would have thought to ask for. Thats very helpful. Full Search Client
  • Slide 19
  • TARGETED COMMON LAW COVERAGE SUCCESS FACTOR 19
  • Slide 20
  • COMMON LAW: AN EXPANDING UNIVERSE [VISUAL: Can we show all types of common law sources: magazines, newspapers, business publications, directories, etc.?] In a world with MORE information, how can you pinpoint the RIGHT information? 20
  • Slide 21
  • SOLUTION: QUALITY COMMON LAW CONTENT 21 Our proprietary Common Law database offers uncommon: Freshness We continually update information to ensure accuracy. Relevance We routinely add new cutting-edge sources of trademark information. Reach Thousands of industry and business sources from 250 suppliers. General and targeting specific goods. Completeness Includes owner and company information. Benefits to you: Identify confusingly similar marks that could be missed by more limited searches. Confidence that decisions are based on up-to-date information from relevant sources.
  • Slide 22
  • DONT FORGET THE WEB (thats billion) web pages and counting Imagine how many brands are represented on those pages. If youre missing the web, youre missing one of the most important global sources for trademarks. (Source: http://www.worldwidewebsize.com) 22 8,200,000,000
  • Slide 23
  • SOLUTION: WEB INTELLIGENCE Use same query system for web common law as for USPTO and State searches. Analysts identify the most important trademark elements Focus on goods terms associated with the mark. Cited terms on web pages are clearly indicated. Custom web search solutions are our specialty. Benefits to you: Receive targeted web findings and consistent results. Minimize the number of hits to review, saving you time. 23
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  • 24 Our Web Analysts have trademark research expertise plus web research experience. [VISUAL: Photo of actual TCM Web Analyst] Name: Jorge Chacon - details to follow Education: ????? Years of experience: ????? Specialized expertise: ????? WEB ANALYST PROFILE
  • Slide 25
  • SOLUTION: WEB SEARCH EXTENSIONS Thomson CompuMark exclusive Add targeted trademark-rich websites for 45+ industries. Have web sites youd like to target? We can include them. Benefits to you: Deep, industry-specific web coverage uncover relevant marks that otherwise could be missed. See how trademarks are used on the webmitigating risk and deepening your understanding the competitive environment 25
  • Slide 26
  • STREAMLINED REPORTING AND ANALYSIS SUCCESS FACTOR 26
  • Slide 27
  • YOUR DAILY CHALLENGE 27 How can you get more done in less time?
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  • Benefits to you: Make more informed decisions in less time, with less effort. Spend more valuable time advising clients. Access information faster, reducing wasted time. 28 SOLUTION: ANALYSIS TOOL ON SERION The Analysis Tool streamlines your entire trademark workflow:
  • Slide 29
  • Results of recent Customer Satisfaction survey: overall satisfaction would recommend the Analysis Tool Availability search reports are often quite long and I need to be able to pare them down quickly and efficiently. I also need to be able to communicate those results to colleagues or clients in a very clear and concise manner. The Analysis Tool helps me do both better than before. Before using the Analysis Tool, there was much more effort involved in creating reports. Now, I just export the data and its virtually ready to go. 29 USERS LOVE THE ANALYSIS TOOL 91% 92%
  • Slide 30
  • EXPERT, PERSONALIZED SUPPORT SUCCESS FACTOR 30
  • Slide 31
  • 31 TECHNOLOGY + PEOPLE Technology is great .but so is personal service from real experts.
  • Slide 32
  • 32 SOLUTION: EXPERTISE ON TAP 32 Have a question or a special search request? Knowledgeable Representatives a phone call or email away Online chat support Need help making the most of our online tools? SERION Training Seminars SERION Certification Program industry first
  • Slide 33
  • 33 EDUCATIONAL RESOURCES Your go to source for the latest industry news and insights. Webinars, videos, podcasts Newsletters In-depth special reports covering important IP topics
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  • 34 BIG CHALLENGES ARE NO BIG DEAL No order too big Large search requests Exceptional at tight deadlines Guaranteed delivery times We love special projects Work with you to meet specialized needs Custom solutions for any search challenge
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  • 35 SPECIAL REQUESTS OUR SPECIALTY Example: After Hours Assistance Client need: Called at 6:30 p.m. Order: Ten 4-hour searches with Web Search Extensions. Our response: Business as usual. We identified the analysts and filled the order. Result: Client was able to keep trademark launch on schedule.
  • Slide 36
  • 36 FIVE SUCCESS FACTORS, ONE PARTNER Thomson CompuMark delivers: Data quality and accuracy Intelligent search strategies Targeted common law coverage Streamlined reporting and analysis Expert, personalized support We turn complexity into clarity. 1 2 3 4 5
  • Slide 37
  • THANK YOU TRADEMARKS.THOMSONREUTERS.COM IP.THOMSONREUTERS.COM 37