Do I need to conduct a trademark clearance search?

What are the dangers of skipping a trademark clearance search?

You are not required to conduct a trademark clearance search before preparing and filing a trademark application. Is it a good idea to do so?  Absolutely! A trademark clearance search identifies potential conflicts your application could encounter when the United States Patent and Trademark Office (USPTO) reviews it and decides whether or not to approve it. It also allows a trademark attorney to advise you on additional risks you might face in using your trademark.

The scope of a trademark clearance search can vary widely. A comprehensive search ordered from a third-party service provider, would typically include:

• USPTO database — registered marks and pending applications;
• State registrations — all 50 states
• Business names and Trade Names
• Online databases and industry publications directed to the goods or services being searched;
• Domain names
• Internet websites

A trademark attorney can use the trademark clearance search to analyze if registration is likely available for your trademark, how protectable your trademark is, and what potential conflicts your trademark could face during the registration process and beyond.

Analyzing Availability

Reviewing a trademark clearance search, your trademark attorney will analyze the availability of your mark for use/registration.  It is more complicated than it might sound. Analyzing a trademark clearance search involves spotting the potential conflicts your application and use of your trademark could encounter.  The strongest potential conflicts occur between similar marks that are used in commerce on the same or similar goods.  If this is the situation, the chances the USPTO will refuse to register your mark on likelihood of confusion grounds are high. Your trademark attorney can evaluate any similar marks in light of likelihood of confusion factors and provide you with valuable information to assess the risks of refusal and also infringement.

Assessing Protect-ability

With a trademark clearance search, your trademark attorney can assess the protect-ability of your trademark.  For example, if similar marks have successfully registered on the Principal Register, it may be the case that your trademark has a high chance of success as well. It could also suggest that your trademark is weak because of the popularity of similar trademarks. If your identical mark is registered, however, you may still be able to secure some protection for your trademark; the scope of protection would be narrower than you might have hoped. 

Your trademark attorney can also review the results looking for disclaimers of descriptive elements of registered marks and form an opinion as to how your application could be impacted. 

Analyzing Potential Conflicts

If potential conflicts are spotted in the trademark clearance search, the trademark attorney will then analyze whether the prior user of the potentially conflicting trademark has grounds to object to the registration of your trademark.  If grounds to object do exist, the trademark attorney can then assess the risk. The trademark clearance search can also help your trademark attorney identify senior users of an identical or similar common law trademarks. You are investing resources in providing your goods and/or services in connection with your trademark, but without a trademark clearance search, you don’t have a comprehensive picture of the relevant landscape. 

The dangers of skipping a trademark clearance search are that you are under-informed and have an incomplete picture of the risks you could encounter not only in attempting to register your trademark but simply successfully use it as well.