Trademarks are words, phrases, symbols, marks, logos, or designs that are placed on your goods that identify to consumers the commercial source for the goods. Trademarks are used for both goods and services.

To function as trademarks, trademarks must be uniquely different. Indeed, uniqueness is a legal requirement for being able to register a trademark. When an application to register a trademark is filed with the US Patent & Trademark Office (“USPTO”), ensuring that the trademark is unique is part of the examination process. If the proposed trademark is the “same as” or “confusingly similar” to an existing trademark, the USPTO will refuse registration. Note that being the “same as” and “being confusingly similar” are two different legal concepts and both will be a bar to registration. The concept of being the “same as” is relatively easy to understand. But “confusingly similar” is a complicated legal and factual issue. This is one reason that it is important to have trademark attorneys conduct the later stages of your trademark clearance searching.

How to Ensure Your Trademark is Unique

Early in the process of imagining and creating a trademark, trademark clearance searching is necessary to ensure that your proposed trademark is unique. It is crucial that trademark searching be done early in the process. There is no point in spending a great deal of time, energy and money only to find out, in the end, that someone else is already using the same trademark or one that is confusingly similar to the one you have created.

Many will say there are only two levels of trademark clearance searching. But, as a matter of practice, we here at Revision Legal, have observed that our clients engage in three levels of clearance searching — cursory, preliminary, and full clearance searching.

Cursory trademark searching is the first type of clearance searching and is generally done by the creative design team “in-house” with little or no cost. This type of searching is typically done with commonly-used internet search engines. The idea is to quickly rule out — “knock out” — various trademark ideas, designs and concepts based on brands and trade/service marks that readily appear online. Cursory searching works best for word marks, since searching word combinations is relatively easy. By contrast, image searching is needed for design aspects of a proposed trademark. But search engine software for image searching is not quite as advanced as for word searching. Cursory clearance searching will often find “same as” matches for a proposed trademark which allows the design team to “go back to the drawing board.”

The next type of search is generally called a preliminary search. This type of trademark searching is best done by trademark counsel that specialize in these services. Search fees are involved, but worth the cost to avoid “running down a dead end.” To oversimplify matters, a preliminary search involves searching of databases specifically designed for clearance searching. Preliminary clearance searching generally locates trademarks and service marks that are “confusingly similar.” Legal input is needed to determine how close the existing mark is to the proposed mark. The USPTO and federal court examine about a dozen factors in analyzing what is “confusingly similar.”

Finally, just before beginning use of the new trademark in commerce and before filing an application for registration, a full and complete clearance search should be conducted which will cover all relevant domestic and international databases including lapsed and abandoned trademarks and service marks.

Contact Revision Legal For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

The DuPont Factors for Likelihood of Confusion

When the USPTO or a court evaluates whether two marks are “confusingly similar,” the analysis is governed by a multi-factor test. In the trademark context, courts and the TTAB apply the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — commonly called the DuPont factors. Not all factors carry equal weight, and not all factors are relevant in every case. The most important DuPont factors are:

• Similarity of the marks in appearance, sound, connotation, and commercial impression — this is typically the most important factor; marks are compared as a whole, not dissected element by element
• Relatedness of the goods and services — marks that are similar but used on entirely different goods may coexist; marks used on the same or related goods are more likely to be found confusingly similar
• Similarity of trade channels — marks sold through the same retail channels (e.g., both on Amazon, both in grocery stores) are more likely to cause confusion
• Conditions of purchase — consumers who purchase expensive goods with deliberation are less likely to be confused than consumers who buy inexpensive goods impulsively
• Strength of the senior mark — famous or well-known marks are given broader protection; weak marks receive narrower protection
• Actual confusion — evidence of actual consumer confusion is highly probative of likelihood of confusion, though its absence does not necessarily preclude a finding of likelihood of confusion

Understanding how examiners and courts apply the DuPont factors is essential for interpreting the results of a clearance search. A preliminary search may identify a potentially conflicting mark, but whether it actually poses a legal barrier depends on how the DuPont factors weigh out in your specific situation. This analysis requires legal judgment, which is why clearance searching should always culminate in a written legal opinion from a trademark attorney.

Common Law Trademark Rights and Why They Matter

Searching the USPTO’s TESS database is necessary but not sufficient for a complete clearance search. In the United States, trademark rights arise from actual use in commerce, not from registration. A business can have legally protectable common law trademark rights without ever filing a federal registration application. If your proposed mark conflicts with a common law mark — even one that is not federally registered — the common law owner may have priority of use in the geographic area where they have been using the mark.

A comprehensive clearance search covers common law usage through business name databases, state trademark registries, internet searches, industry-specific databases, and domain name registrations. This is why a full clearance search is more involved than simply checking TESS. Common law conflicts represent one of the most significant hidden risks in trademark clearance because they are not consolidated in any single database.

International Trademark Considerations

If your business plans to operate internationally or to sell goods or services in foreign markets, international trademark clearance must be part of your strategy. Trademark rights are territorial — a US trademark registration does not protect your mark in other countries. A mark that is available in the United States may already be registered and in use in Canada, the European Union, or other key markets.

The Madrid Protocol provides a streamlined mechanism for filing trademark applications in multiple countries through a single international application administered by the World Intellectual Property Organization (“WIPO”). Before filing internationally, however, the same clearance principles apply — a pre-filing clearance search in each target jurisdiction helps identify potential conflicts before application fees and legal costs are incurred.

Why Trademark Clearance is a Business Investment, Not a Cost

Some businesses resist spending on trademark clearance, viewing it as an unnecessary upfront cost. This is a significant strategic error. The consequences of inadequate clearance can include:

• USPTO refusal of a trademark application after significant registration fees have been paid
• Cease-and-desist demands from a senior mark owner after you have already invested in branding, packaging, and marketing
• Federal trademark infringement litigation with exposure to injunctive relief, damages, and attorney’s fees
• Forced rebranding — one of the most expensive outcomes — requiring redesign of logos, packaging, website content, signage, and all marketing materials

Spending on proper trademark clearance before launch is far less expensive than any of these outcomes. Contact the trademark lawyers at Revision Legal at 231-714-0100 to conduct a comprehensive trademark clearance search.