WHEN TO ATTACK: how FIFA manages its trademark portfolio

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1 MAY/JUNE 2016 WHEN TO ATTACK: how FIFA manages its trademark portfolio US presidential election The main contenders and their views on IP Xerox interview trademark genericide China focus Can a leopard change its spots? All change at the PTAB Why the new procedures are no laughing matter TO READ MORE NEWS AND FEATURES, VISIT:

2 Corsearch: Time to revolutionise trademark research again Global brand clearance and protection provider Corsearch is launching a new approach designed to achieve actionable results from research review that are multi-dimensional and more empowering to the practitioner. WIPR spoke to Steve Anderson and about how it works. As technology continues to develop at a record pace, industries are feeling not only the benefits but also the drawbacks of this connectivity. The trademark industry is no exception to this and the effects of information overload are being felt throughout. It s a daunting task for legal practitioners to undertake a trademark search. They must ensure they search through mounds of search results from a wide array of sources and leave no stone unturned. This is where Corsearch can help. With more than 60 years of experience and service in the trademark community and offices throughout the US and Europe, Corsearch is a subsidiary of Wolters Kluwer, a leading global information services provider based in the Netherlands. Corsearch specialises in providing trademark and brand clearance, and protection solutions throughout the lifecycle of a brand, from screening to searching to monitoring. On the searching front, Corsearch s new method, Corsearch FOCUS, offers a visual approach to mitigating trademark risk, ideally changing the way practitioners interact with their search results. We ve taken a very serious process and attacked the problem of data overload, mitigating it to a degree that s reasonable and manageable, 48 World Intellectual Property Review May/June

3 ImageFlow / Shutterstock.com says the man behind the project, Steve Anderson. Anderson, director of product management, trademark solutions at Corsearch, and an experienced trademark practitioner himself, has been developing the concept for a number of years. Based on feedback from hundreds of clients and prospects we decided it was well past time to once again change the way people clear marks, Anderson explains. It s basically about taking large datasets from diverse sources and manipulating them in a way that s easier for practitioners to understand, get through quickly and arrive at a determination without a lot of distractions. The trademark industry has always been fairly traditional, but the current model for searching for trademarks is no longer tenable because of ever-increasing results in search results. Anderson explains: It s time for a paradigm shift. After speaking extensively to clients it was clear that it was time for them to change or risk being left behind. The new methodology we re introducing will allow practitioners to interact more freely with the search results in a visual manner. By providing the guidance and tools to practitioners, we believe it will revolutionise the way trademarks are reviewed and analysed, says Stephen Stolfi, Corsearch s vice president of global sales and strategic partnerships and an industry veteran World Intellectual Property Review May/June

4 of more than 20 years in brand clearance and protection. Cognitive studies have revealed that visuals are digested 60,000 times faster than text. And yet, says Anderson, trademark practitioners have been forced into reviewing serial potential conflicts in text, just out of tradition. This makes no sense. Stolfi predicts: We strongly believe that within two years, most trademark practitioners will be using visual review of search results in their analysis on the availability of a proposed name or logo. This isn t the first time the company has led the way. In 2004, Corsearch was the first business to put the paper process of searching online, moving it from a physical presence to its dynamic platform, Corsearch Advantage, automating much of the manual effort so that practitioners could devote more time to their analysis. The industry soon followed its lead. Back then, the number of trademarks was much smaller and the volume of sources of potential risk was manageable. But as the information age began and the internet developed, data became more abundant and risks more pervasive. Reaching boiling point It s like blood pressure. It creeps up on you slowly and before you know it it s unmanageable. This is kind of what happened to the trademark industry, says Anderson. As technology changes, so do brands and how brands are used and this influences how the legal industry clears and manages risk. Over the past few years, we have developed this new concept of moving away from text data and into the visual age. When Corsearch launched Advantage in 2004, the entire market was viewing paper (or PDF) reports. Fast-forward to the present day and most clients have converted to highly interactive review through its platform. Even so, with the number of potential conflicts continuing to grow and pressure for time ever increasing, Corsearch is driving its newest and perhaps even more profound innovation to the industry by moving from serial review of conflicts to a visual representation based on specific and objective metrics around both similarity of marks and relevancy. Corsearch FOCUS, explains Stolfi, by visualising research on a dynamic radar, is putting the fun back into trademark searching and making it seem almost as though you re playing a game. The gaming sector is an industry that Corsearch has taken lessons from. The new generation of trademark practitioners grew up playing video and computer games in which a lot of information is processed in a short space of time, and the company has used this idea to make searching more interesting. Trademark clearance is not a game when you lose in this, you won t be able to go forward with a proposed name or logo but that doesn t mean it can t be made more pleasurable by being able to clear risk visually, Anderson explains. The development of the concept was aided by Anderson s experience in the pharmaceutical industry. When you launch a pharmaceutical brand you can t make a mistake, as risk tolerance is extremely low. The clearance process was cumbersome and data-intensive to the point where life-and-death issues can arise from a problematic mark, he explains. With Corsearch FOCUS, the concepts are nothing unfamiliar to the practitioner. Every practitioner and every intellectual property office has to consider specific similarity metrics and then the relevancy of potential conflicts. What we do is automatically lay that out for the user in an interactive way that allows it to perform its analysis immediately, says Anderson. Like most great innovations, he adds, it works amazingly well because it reflects the way the user already thinks. I ve never seen a product or concept that has tested this well in its market. And those who have tried it also say it adds a legitimate element of fun into the process. Corsearch s clients range from Fortune 500 companies and large law firms to smaller firms that specialise in intellectual property. The business has grown substantially over the last ImageFlow / Shutterstock.com 50 World Intellectual Property Review May/June

5 five years in Europe with the acquisition of Edital, a provider of trademark solutions, and Avantiq, a search company specialising in the pharmaceutical industry and global clearance projects. No rest for the wicked A lot of little things add up to differentiate us from our competitors, says Stolfi. On the service side we re extremely focused on listening to our customers and trying to exceed their expectations, whether that s working throughout the night or over a weekend to complete a search project. Corsearch is a very client-focused company, looking at and understanding clients workflows to ensure it provides the best possible service to its clients. He explains: We observe clients and how they work, and complete a number of interviews with them to understand their workflow. Using this we develop the tools that will allow them to deliver their own advice to their end clients more effectively and efficiently. The Corsearch team also believes that Corsearch FOCUS provides tools that allow the professional to deliver its analysis and advice more clearly to non-attorney clients, thereby helping the practitioner to stand out from the crowd. Many of our staff have been in the industry and worked in the same roles as our clients. Our team is experienced and understands the needs of practitioners, says Stolfi. He also explains that the company has a quality process that no-one else in the industry has. Its quality checks and quality assurance process have led to best-in-class rankings in independent global practitioner surveys. To Stolfi, it s vitally important for the company to be a trusted partner that clients can count on not just as a typical vendor, but as a valued consultant. Anderson agrees and adds: It s about understanding the problems of the industry. The people who serve the industry best are the people who can best address the problems. Talking about trends A major talking point for Stolfi is the new generic top-level domains (gtlds). He personally led the effort to secure a new gtld Steve Anderson for Wolters Kluwer of.wolterskluwer. Corsearch is also an agent for the Trademark Clearinghouse, providing a service to help brand professionals submit trademark data and helping guide them through the process of protecting their rights. It s still very early days for the new gtlds and the expansion of the internet. With a second round on the horizon, this area will only grow further as the internet expands, with dot generics and dot brands taking a much bigger place, says Stolfi. Anderson is more wary, saying that from his perspective gtlds are a double-edged sword. It s created a great new ability to get your brand into different domains and this is excellent from a branding perspective. But from a trademark clearance and brand protection perspective, it s become arguably unmanageable because there are so many. He adds that it is difficult for brand owners to monitor infringements because there are so many channels and opportunities for creating confusion. Further, infringers are always looking to leverage domain names in certain cases against the brand owner. This is a great example of why it s so important to use an approach like Corsearch FOCUS that puts the potential conflicts into a fuller context of the overall risk assessment that a practitioner needs to provide. A complex environment True clearance to both register and use a mark is no longer a single-track process. The advent of social media names, domain TRADEMARK CLEARANCE IS NOT A GAME WHEN YOU LOSE IN THIS, YOU WON T BE ABLE TO GO FORWARD WITH A PROPOSED NAME OR LOGO BUT THAT DOESN T MEAN IT CAN T BE MADE MORE PLEASURABLE BY BEING ABLE TO CLEAR RISK VISUALLY. names, and product-related mobile apps exponentially increases channels for potential conflict. Making sure you protect a complete comprehensive brand is becoming more multi-dimensional and complex, Anderson says. Anderson is also confident that the use of non-traditional trademarks will increase as technology develops further and new ways of communicating a brand arise. Non-traditional trademarks currently include scent marks, sound marks and sensory marks which, at the moment, are not that uncommon and can be difficult to register. There s been an uptick in the use of visual marks, demonstrating a shift away from straight word marks to a graphic type of brand and logos, he says. Stolfi explains that graphic logos are becoming more important in the marketplace, as having a brand and logo that stand out on the internet and other visual media is vital. Having a logo that stands out, especially on social media and in apps, where there s a multitude of different languages, allows the brand to extend its reach much further, he says. An increasing number of brands are choosing to launch in non-traditional ways, with some testing concepts and ideas in a much more fluid manner and launching on social media. With innovation comes opportunity, says Stolfi, but there is also a growing need for brands to protect themselves against infringement and to be mindful of infringement on social media platforms. Whether you re clearing or protecting a mark, it is getting and harder to track and analyse all potential conflicts. That s why Corsearch FOCUS was developed, adds Anderson. Our job is to understand and improve the research workflow for practitioners. It s not easy, but sometimes it can be fun. World Intellectual Property Review May/June

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