Trademark Clearance Searches: Vetting Your Trademark Before You Spend Heavily Promoting Your Brand Print PDF
Frequently, business owners fail to vet their trademark before beginning to use it to build their brand. This is because owners fail to understand the risks of not doing so and/or do not want to incur the costs of performing trademark searches. However, in many cases, performing trademark searches up front can provide significant savings in the long run.
For example, let’s say you choose a trademark for your brand and begin to use and promote the brand in your market area (e.g. the tri-state area of the East Coast) without first conducting a trademark search.
Within a few years the brand has gained significant recognition in the tri-state area thanks to the hundreds of thousands of dollars you have spent in promotion. You now want to expand nationally, and you start selling your product (or open a location) on the West Coast.
A few months later, you receive a letter from an attorney for a company based in California alleging trademark infringement, and you discover that this company has been selling similar products under a similar trademark for 20 years on the West Coast. You may be forced to rebrand nationally (or at a minimum on the West Coast and any other markets in which that company has been operating, if they do not have a federal trademark registration). You may also be required to pay damages. It is likely that a trademark clearance search performed at the time you chose your trademark would have uncovered this obstacle, enabling you to rebrand before you spent hundreds of thousands of dollars promoting it.
Trademark clearance searches are designed to uncover such third-party trademarks (potentially both registered and unregistered) that could be obstacles to your use and registration of your potential mark. Generally, there are two types of trademark searches, preliminary “screening” or “knock-out” searches and “comprehensive” or “full-availability” searches.
The screening (or knock-out) search is a limited scope search that offers less information but is less expensive and time-consuming than a comprehensive search. It generally covers all existing federal trademark registrations and pending applications on file and available on the U.S. Patent and Trademark Office (USPTO) database as of the date of the search. It frequently also discloses uses reported in a Google (or similar search engine) search. In each of the above cases, however, the results are generally only for any trademark identical or nearly identical to your trademark.
The screening search does not address any federal trademark registrations that have not yet been reported in the USPTO online database, or federal trademark registrations that are similar (but not identical) to your trademark.
Further, the screening search does not cover state trademark registrations, or, except for the hits in Google, common law usage of the trademark by third parties whose use of the trademark may predate yours but who have not filed for any state or federal registrations for it. These users, called “senior users,” (like the user in the example provided in the first paragraph) even in the absence of a registration often have rights that can create obstacles to your own use and registration, so we want to know about them.
Given its limitations, a screening search is not a substitute for a comprehensive trademark search. However, a savvy screening searcher can search for some variations of words and various combinations of words to uncover potential obstacles, and screening searches can be a cost-effective tool to help determine if your own proposed use or registration may meet obstacles from the USPTO or certain third-party trademark users or federal trademark registrants.
Further, screening searches can be particularly useful if you have a lot of trademarks you are considering and want to try narrowing the choices by knocking-out trademarks that have easy to identify obstacles to use or registration. But once you have narrowed down to just a few favorite choices, before proceeding with use or registration, you may want to perform a comprehensive search on those favorites.
A comprehensive trademark search report, though more time consuming and expensive, covers most of the exclusions described above, as well as trademarks that are not just identical, but also are phonetically similar to your trademark. The comprehensive search report comes from a prominent independent national search service, and it checks (i) the federal trademark register for existing registrations as well as for applications that predate your own, (ii) all 50 state trademark registries, and (iii) various business, consumer, and domain name and other sources that may show potential senior users. A comprehensive trademark search report also discloses more information such as the particular goods or services that a registered trademark holder offers, which may allow you to distinguish your trademark from other trademarks and more readily identify potential senior users.
A comprehensive trademark search has its own limitations, so it is not a risk-free predictor of your own ability to use or register your proposed trademark. But, it is usually a much better predictor than a screening search because it covers more sources, searches for trademarks that are similar and not just identical, and it provides more information about the trademarks it discloses.
It is also very important to note that relying on the USPTO to vet your trademarks during your federal application process is also not a substitute for any trademark search. When applying to the USPTO for a federal trademark registration, the USPTO will search existing federal trademark registrations as well as pending applications on file. However, they will not search state registrations or common law usage of the trademark by potential senior users.
The foregoing information is provided only for general reference. It does not constitute legal advice. Legal advice may be provided based only on specific facts. Please consult us before relying on any general information stated herein. We are happy to discuss any questions you may have regarding trademarks.