Why should I have a clearance search performed before adopting and using a trademark?
A trademark clearance search 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.
Therefore, a trademark clearance search 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 USPTO. Such potential legal risks can be avoided, and cost savings realized, by first having a trademark search done.
I would like to perform a trademark clearance search. What are my options and how do I perform a trademark clearance search?
If you’re talking to an attorney about doing a trademark clearance search and they’re promising a low rate and that they can do it in 20 minutes or the same day, in all likelihood they’re not taking the time to do a fully proper search. There are trademark searches that you can do online in a few minutes on a random website and then there’s a proper way to do a full, in-depth U.S. trademark clearance search to get a legal clearance of your mark. In this article, I will discuss each particular type of trademark and the proper way to conduct a U.S. trademark clearance search in order to determine whether you can use and register your trademark.
To perform a full, in-depth U.S. trademark clearance search, you will need to perform a (1) federal trademark search on the USPTO database; (2) a trademark search of all 50 states’ government trademark databases; and a (3) search for common law trademarks (or a search for trademarks that are in use in the marketplace but are not registered). Only by looking through all three of these different categories of trademarks can we provide an opinion on whether or not a trademark is clear to use and register.
The first type of trademark search that needs to be performed is a federal trademark search, which is commonly known as the United States Patent and Trademark Office or USPTO database search. For this type of search, you can go online to the USPTO database and type your name in the search bar to see if there’s anything that comes up. This initial step is commonly referred to as a knockout search. You should look for anything that’s an exact match to your trademark. Although this is where a lot of people stop, you can’t stop at a knockout search when you’re doing a proper federal trademark clearance search. Not only do you need to search for identical marks, but you also need to search for phonetic equivalents, alternative spellings, homonyms, synonyms, anagrams, marks with similar words or components, and foreign language equivalents which can all be cited against your trademark and block its registration.
There are all sorts of things you have to look for. In fact, the number one reason we see clients get refusals is not because there’s an exact match that would have been found within a few seconds of doing a basic knockout search, but it’s from nuanced similar marks, such as an adequately similar mark or a mark with a slightly different spelling that was not found during the initial search. Therefore, it’s important to keep in mind that the searches that you can do online via the USPTO website or other websites are only helpful for looking at obvious issues and are not helpful for examining all the nuances and variations of trademarks that exist that could cause a problem for your mark.
If you don’t find any conflicts in the federal trademark database, the next step is to look at all 50 state government databases. In the United States each state has a trademark database where you can search for registered trademarks. Don’t worry though, you don’t have to register your trademark in all 50 states. The federal system exists so that you can file one trademark and it’s good federally. However, local businesses sometimes don’t feel the need to file a federal trademark registration. Instead, they may have filed with their local state government. If they did that and if they have been operating their business since before you filed your federal trademark application, they could cancel your registration because they had the prior state registration and the prior use in commerce in the United States.
The final category of trademarks are common law trademarks which are marks that have not been registered anywhere. The reason you need to look for this type of trademark is that you need to ensure there’s not another company out there that’s been using the trademark since before you register your mark. That’s because the USPTO rewards trademark rights based on the actual use of the trademark. For example, if I opened up “The Phoenix Trademark Attorney Law Firm” and I’ve been operating for 10 years as a trademark attorney and I never registered the trademark anywhere and somebody else opens up “Phoenix Trademark Attorney Law Firm” and offers trademark services, I would still have a trademark claim because clients got to know my name over the years as it relates to trademark services. As such, if someone else uses that name it could create confusion in the marketplace. The same goes for your business.
If somebody has been in your industry using an identical name or a very similar name to yours, they’re going to have certain rights even if they never took steps to register it. One of the most dangerous things about a common law trademark or a state trademark is that most people never even look for these when they’re doing their trademark search because they think that as long as the federal government database is clear, the government will approve their registration, but that’s not how it works. Even if you get your mark is federally registered, during the first five years of registration, the owner of a common law trademark or a state trademark can file a petition to cancel your federal trademark registration on grounds that they had prior use in the United States.
In conclusion, if you’re going to do a trademark search and someone tells you that they can do it in a matter of minutes, they’re not giving you the full story. To perform a trademark clearance search properly, you have to do a federal, state, and common-law search and you have to do the legwork and do the research in order to ensure you do not have a problem now or in the future with the trademark you’re selecting. If you have questions, please fill out our contact form and one of our attorneys will promptly contact you.