Businesses filed over 340,000 trademark applications in the US in 2014, according to Matt Schneller, Co-Founder of a new automated trademark clearance tool called TM TKO. Businesses have already filed more than 240,000 between January and August this year alone. Every company needs a name, and many also need to name their products. TM TKO makes the process of analyzing the strength of a proposed mark and identifying registration risks faster and more accurate.
Schneller and I discussed over email the challenges to automating trademark clearance and which lawyers stand the most to gain from automation in the legal industry.
What’s the need?
There are many more searches done than the number of filed applications. Businesses frequently want to clear a mark for defensive purposes but don’t want to file for it, or end up doing multiple searches to find a clear mark.
All that searching can get expensive. “Doing a manual clearance search using the USPTO website or its commercial equivalents can take 45 minutes or so in attorney or paralegal time,” Schneller told me.
The goal of TM TKO is to slash that time. Schneller began the company with Alex Durgin. Both have experience in trademark law. Schneller spent over a decade as a trademark lawyer at Perkins Coie and Bracewell & Giuliani in Seattle. Durgin has developed applications for Bloomberg Law, HCA, Asurion, Central Parking, and others.
Other players in the space include Compumark and Corsearch. Both offer a blend of (largely) manual clearance tools for “preliminary” searches and considerably more expensive, human-run “full” searches. Finnish company TrademarkNow most closely approximates TM TKO.
How does it work?
A user enters a mark and the products or services it will be used for. For example “Softwareist Blog” and “legal/tech blogs.” Check out a sample search for Softwareist Blog for legal/tech blogs.
TM TKO then divides the mark into its component parts. Compound words are separated. It then analyzes the distinctiveness of each term as a part of the mark. So for the Softwareist Blog example the “Softwareist” is much more distinctive than “Blog.”
Or for “ABC Legal” for legal services, TM TKO identifies “ABC” as much more distinctive than “Legal,” and provides an interactive bar graph detailing the strength of each term.
TM TKO then performs searches to identify similar marks – usually around a hundred for a typical mark. It then runs thousands of searches to identify prior filings with related goods or services.
It analyzes and merges the results, providing both a sorted table of results and an interactive scatterplot for quick visual analysis.
“TM TKO helps trademark lawyers and paralegals quickly, accurately analyze the strength of a proposed mark and identify significant registration risks,” Schneller wrote. “It performs thousands of searches per mark, and presents the 100+ most relevant third party marks in easy-to-read graphics and charts.”
Why did you start it?
“In ten years of legal practice and as an adjunct professor teaching trademark law at the University of Washington, I had described how to do clearance searches to scores of new attorneys and paralegals,” Schneller wrote. “At a college reunion, I described the process to Alex Durgin, an application developer and good friend, and asked him if he thought we could explain the process to a computer. He did. It has basically been a big science experiment since – figuring out how we can track and manage huge amounts of data and quickly translate those into meaningful results that line up with the intuitions of a trademark professional.”
“It has basically been a big science experiment since.”
The story of what got the two to the finish line is pretty funny.
“Last fall, we decided to push ourselves and commit to getting a booth at INTA, the largest trademark conference in the world,” Schneller wrote. “We laid out the money, and spent the next months furiously scrambling to pull the many pieces of the puzzle together. We literally finished the last key visualization tools on the way to the airport to fly to the conference.”
This is Alex’s laptop sitting on milk bottles:
“Given the amount of data we were crunching, it was the only way to keep it cool enough that it didn’t melt down.”
“Our most significant challenge is to keep demonstrating to seasoned trademark professionals that we really are doing at least as thorough a job searching as they would do themselves in a manual search,” Schneller wrote. “That trust isn’t easy to earn, and so we try to ‘show our work’ as much as possible to build the trust of a very demanding audience.”
What does the future of legal tech hold?
“The biggest benefits from the expansion of legal technology so far may actually be for smaller practitioners.”
“Hopefully, trademark lawyers quickly adopt new technologies to speed their clearance efforts! More generally, the biggest benefits from the expansion of legal technology so far may actually be for smaller practitioners.”
“Excellent, cheap cloud-based time tracking and billing systems and legal research tools allow small shops and solos to be very competitive with large firms in a way that wouldn’t have been true a decade ago.”
“Excellent, cheap cloud-based time tracking and billing systems and legal research tools allow small shops and solos to be very competitive with large firms in a way that wouldn’t have been true a decade ago,” Schneller wrote.
Most exciting developments in the legal industry?
“I am very curious to see where large firm consolidation leads,” Schneller wrote. “Especially whether the built-in referral networks that global firms provide outweigh the conflicts issues and overhead-related disadvantages.”
TM TKO provides trademark strength and clearance search analysis to trademark lawyers, paralegals, and marketing professionals. It jump-starts the review process by providing results and analysis in seconds, allowing busy lawyers and paralegals to quickly meet client clearance demands.
This allows the busy legal professional to be responsive enough to keep their most demanding in-house or external clients happy and still meet the many other demands on their time. A single TM TKO search starts at $100 (bulk discounts are available)
This is “a significant savings compared to monetizing the same amount of attorney or paralegal time,” Schneller wrote. To learn more about TM TKO, check out their homepage and/or a walkthrough of the software.
If you are or know someone I should profile, please let me know in the comments!
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