Trademark Clearance Searching: Avoid Legal Risks and Realize Cost Savings
Hinckley Allen Intellectual Property
February 28, 2019
By: Carol H. Peters, Alexander P. Montgomery
Trademark clearance searching is valuable because it allows you to get ahead of obstacles and avoid potential legal issues before they arise and before your company invests time and resources in developing its trademark. Consider the set-back you would experience if the “brand rug” is pulled out from under your company.
So, while contemplating the visual design and messaging of your selected trademark, consider the legal issues and address them with a trademark clearance search. The return on your investment would be immediate and long-lasting. Below are answers to common questions about trademark clearance.
Why is it recommended to have a clearance search performed before adopting and using a trademark?
Clearance searching helps to identify any legal barriers to your company’s use or registration of its trademark (which can be the company business name, brand name, slogan, or logo) before the company begins to actually use the trademark or apply to have it registered with the U.S. Patent and Trademark Office (USPTO).
Trademark clearance searching assesses whether the trademark you wish to use is identical or confusingly similar to, and thereby potentially conflicts with, earlier existing registered, pending, or unregistered trademarks. If a third party is using, or holds a trademark registration or pending application for, the same or confusingly similar trademark, your company runs the risk of such third party asserting its earlier trademark rights against you by sending a cease and desist letter or even filing a trademark infringement lawsuit. Also, if you attempt to register your trademark with the USPTO without first clearing it, your company runs the risk of the USPTO citing a prior registration or application for an identical or confusingly trademark against your application as grounds to refuse registration.
Such potential legal risks can be avoided, and cost savings realized, by first having a trademark search done. A trademark search is especially important before your company invests in developing its brand, such as by building your company’s website and displaying your trademark and logo.
I have already checked the U. S. Patent and Trademark Office’s online trademark database. Why do I still need to have a trademark clearance search done?
Searching the U.S. Patent and Trademark Office retrieves only records for registered and pending federal trademarks. It does not retrieve records of relevant state registrations or unregistered trademarks including company names, brand names, and domains, nor provides an effective means to find records for logos (design trademarks). Unregistered trademarks can provide their owners with rights that are senior to (earlier than) your rights because trademark rights in the U.S. are based on actual use in commerce, not registration. Therefore, a senior rights holder is the party who first used an identical or similar trademark, possibly before your company commenced use of its trademark or placed a trademark registration application on file with the USPTO.
Trademark Office search results can often be misleading, confusing, or not reflect your actual risk exposure. You could also easily miss records of confusingly similar trademarks (i.e., trademarks similar in appearance, pronunciation, and/or meaning) that could potentially create a risk of trademark infringement and block your trademark registration application. Searching is a skill and individuals with searching expertise are more likely to obtain relevant results that would determine whether you are free to use and register your trademark.
I have already secured as a domain name my company’s name or brand name. Why do I need to have a trademark clearance search done?
If you’ve secured your domain registration, congratulations! Your next step should be to request a trademark clearance search, preferably before you launch your company’s website. A trademark clearance search can assess whether your selected name can be used as a domain, company name, trademark, or brand name.
Registering your company’s name or brand name, in whole or in part, as a domain name does not confer trademark rights to your company. The domain serves only as a URL address to your website. So, although you might have been able to obtain the domain registration without any snags, your actual use and display of your domain, and/or your company’s name or brand name, in an active website could constitute trademark infringement.
Companies find it advantageous to have a domain name that is identical or nearly identical to the company business name and/or its primary trademark or brand name. Through use of the domain as a trademark, such as displaying it on your website to promote your services or to sell your goods, could implicate trademark infringement if the displayed domain conflicts with a prior confusingly similar trademark. The owner of such prior trademark may have senior trademark rights in the name that it could readily assert against your company. To resolve such a conflict with a senior rights holder, your company might need to cease all uses of the name as a company name and trademark, as well as transfer the domain registration to the senior rights holder.
How can a trademark clearance search help me avoid legal risk and save me time and money?
A trademark clearance search may significantly reduce the possibility of your company receiving a demand or legal action from a senior rights holder alleging infringement of their trademark by identifying such risks up front in terms of any pre-existing identical or confusingly similar trademarks. In such cases when a conflicting trademark is discovered, and the owner of the conflicting trademark asserts its senior rights against you, your company would likely need to rebrand the company and/or your products or services in order to resolve the conflict and avoid legal action.
Clearance searching also provides you with peace of mind as well as a sound business position from which you can proceed to expend funds to develop and promote your company and its products or services under your trademark. Imagine the loss of time, resources, and brand recognition that your company may experience after it has launched its website or its products or services only to have a senior rights holder allege trademark infringement and force your company to go back to the brand drawing board.
I would like to perform a trademark clearance search. What are my options?
Two options are available:
- a preliminary, cost-effective trademark screening search that can identify immediate conflicts, and
- a full, in-depth U.S. trademark search that yields a comprehensive report including results from multiple databases.
The preliminary trademark screening search accesses federal and state trademark registers for identical and confusingly similar trademarks. Results of this search serve as an initial tool to assist your company in identifying whether an immediate conflict exists between your trademark and prior registered or pending trademarks. Preliminary screening is often used to identify problematic options from a list of possible trademark choices. The preliminary screening search can be performed in-house by a trademark practitioner at a relatively low cost and within a few days.
A full, comprehensive U.S. trademark search accesses the federal and state trademark registers; searches for unregistered trademarks in databases of company business names, trade directories, brand registers, product catalogs, and domain names; and conducts a high-level internet search. The full U.S. search retrieves not only identical and confusingly similar trademarks, but phonetic equivalents, alternative spellings, homonyms, synonyms, anagrams, marks with similar words or components, and foreign language equivalents (which can be cited against your trademark and block its registration). Full U.S. searches typically take about one week.