Once a strong and distinctive Mark has been selected by our client, it is critical to conduct a trademark clearance search to ensure the Mark is available for filing at the United States Patent and Trademark Office. The search will look for registered and unregistered Marks that might result in a “likelihood of confusion” of consumers as to the source of the client’s goods or services. This “clearance” and the resulting opinions, provided to a client in the form of a “registrability” opinion, requires an attorney with significant experience in this area. .
The first step in developing a brand is selecting a strong and distinctive trademark that will be accepted by the USPTO. The purpose of a trademark clearance search is to determine whether a Mark is being used by any other uses, and the search includes others using the identical mark as well as similar marks, in the same or a related industry . Use of a similar Mark in an unrelated field could also bar a registration if the trademark has achieved the legal status of “fame”, as “famous” trademarks are afforded broad protection.
Answering these questions PRIOR to the filing of a Mark for registration saves money, time, resources and efforts and often eliminates potential litigation. The failure to conduct a thorough trademark search prior to application could result in many negative consequences, including refusal and claims against an applicant by a user with prior trademark rights.
Since trademark rights in the United States are actually acquired through use in commerce, NOT by registration, searches must include unregistered marks. This is accomplished through searching domain name registers, business name registers, industry publications, and by conducting Internet searches.
Part of our standard practice for our trademark clients is to design unique searches for each client, and then to use the information we gain to create a successful registration strategy.