Trademark Clearance Searching and Opinions

Brand Registry Trademark specializes in trademark clearances so that trademark applications successfully register.  We have conducted thousands of trademark clearance searches.  We have the knowledge and expertise to x-ray and analyze the brand landscape so that online sellers have what they need to avoid risk and protect their trademarks.

What is a trademark clearance search? 

Online sellers should be aware of whether their name, logo, or domain is already in use by others because prior use by others of same or similar marks is a significant indicator of trademark infringement risk.  Searching and evaluating prior uses of similar marks and goods is known as trademark clearance, with the goal being to “clear” a desired mark—through an experienced analysis and opinion—for use and registration.

Foregoing a trademark clearance search is asking for trouble. 

Too often, online sellers move forward with their names, brands, and trademarks without having cleared them and obtaining the understanding of the brand rights landscape needed for safety.  Having an experienced trademark attorney clear a mark early on reduces the likelihood of bigger problems down the road.  It is better to clear a trademark early on or, even better, when its use is being contemplated, rather than later, when discovery of other’s rights results in difficult and costly rebranding that confuses your customers.

Expertise is required for a proper trademark clearance search. 

Trademark clearance searching is more complex than simply looking to see whether the same brand is used on the same product.  Proper trademark clearance search requires legal skill and acquired experience.  In performing a trademark clearance search, a good trademark attorney will review many different sources before determining if there are any potential liability risks and registration obstacles.  To name just a few, these may include:  common law (unregistered) trademarks, pending and abandoned trademark applications, existing and expired trademark registrations, and other sources, like internet and social media.

Once relevant prior uses are identified, a trademark attorney determines whether any of these prior uses pose a likelihood of confusion against a host of trademark law variables—sometimes called the du Pont factors.

These are:

1. similarity of the marks;
2. similarity and nature of the covered goods and services;
3. similarity of established trade channels;
4. conditions under which, and buyers to whom, sales are made;
5. fame of the prior mark;
6. number and nature of similar marks in use on similar goods;
7. nature and extent of actual confusion;
8. length of time during, and conditions under which, there has been concurrent use without evidence of actual confusion;
9. variety of goods on which a mark is or is not used;
10. market interface between applicant and the owner of the prior mark;
11. extent to which applicant has a right to exclude others from use of its mark;
12. extent of possible confusion; and
13. any other established fact probative of the effect of use.

Lack of expertise in trademark law and clearance searching is one of the reasons that only 40% of trademark applications filed by DIY applicants register at the United States Patent and Trademark Office (USPTO).  In contrast, experienced trademark attorneys are twice as successful.  In fact, the USPTO recommends that trademark applicants hire trademark attorneys to do clearance searches, even though they are not required to do so.

More specifically, the USPTO states that:

Attorneys who are familiar with trademark matters represent most applicants. Before ever filing a trademark application, a trademark attorney can conduct a more comprehensive search for potential problems with your use of a proposed mark than you will be able to conduct. The attorney then can counsel you regarding use of the mark, recommend whether to file a trademark application, and advise you on your likelihood of success in the registration process.

Simply put, good trademark clearance searches lead to good trademark registrations and strong attendant rights.

Contact Brand Registry Trademark today to search and clear your trademark with an experienced trademark attorney.