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Trademark Clearance Search: The First Step in Adopting a Trademark

By John DiGiacomo

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.

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