The Trademark Clearance Process
What is the Trademark Clearance Process for Your Proposed Trademark?
The goal of a trademark is to create exclusive brand positioning which will persuade potential customers to buy your product or to pay more for your product than a competitor’s product. Trademarks can generate extra margin for your business.
However, before you use Your Trademark you must be the first to use the trademark as compared to other similar trademarks for similar goods and services. Where there are two conflicting trademarks, the first-used trademark (the “Prior Trademark”) usually has superior rights against the new trademark. However, sometimes a careful legal analysis will demonstrate this is not true – depending on the circumstances.
A trademark search and legal opinion gives you the comfort to know that you can offer Your Trademark without interference from a Prior Trademark. If you use Your Trademark without searching for Prior Trademarks, it is possible that a Prior Trademark could later force you to cease use and ask for damages.
If you have to cease using Your Trademark, this will involve mountainous amounts of time, diversion of efforts, legal fees and revision of your marketing materials. So, let me present your options to avoid having to involuntarily changing your trademark.
You need to undertake two tasks:
Choose a Great Trademark
Choosing a suggestive, arbitrary, or fanciful trademark increases the likelihood that Your Trademark will be eligible for trademark protection. Although choosing a trademark that satisfies both marketing and legal concerns requires a lot of time and energy, you will be rewarded with a strong brand that your company can use exclusively and forever to capture additional profits. My law firm has written two valuable articles on this topic and we would be happy to share these articles with you.
Clearance Searching Process
A “Partial Search” reviews the trademarks on record with the US Trademark Office. This minimal effort, inexpensive search tells you if any easily findable, conflicting trademarks exist. It is not intended to be exhaustive but will inform you if it is worthwhile to proceed to a more extensive and useful Full Search. Perhaps you stop at the Partial Search.
If no conflicting marks are found during the Partial Search, it may be appropriate to do a more comprehensive “Full Search”. This search will give you the most definitive understanding of whether a Prior Trademark could supersede Your Trademark.
A Full Search reviews every imaginable source- products and services directories, business names, white papers, the web, advertisements, the US Trademark Office, state trademark offices, articles, industry publications, newspapers, phone books, business directories, Yellow Pages, catalogues, and many other sources. A Full Search is the most definitive method to determine if a Prior Trademark exists.
The Lawyer’s Job during a Search
As your lawyers, will be responsible for two tasks. First, we will inform you whether Your Trademark is a strong or weak trademark. Second, we will legally analyze the search and tell you what are the chances a Prior Trademark could prevent you from using Your Trademark.
Limits of a Full Search and Follow-up
The Search Itself
Searches are part science, part art. The searches are scientific because they are designed using quantifiable rules and produce quantifiable information that is reliable. The art portion is that the search can be incomplete due to a conflicting trademark not being visible in the marketplace even using best practices search methods. We use Thomson and Thomson because they are arguably the best trademark search company in the world. This lessens the risk as much as possible. Another example is just bad timing- a Prior Trademark could have been introduced within days after the Full Search was conducted and the Prior Trademark would therefore not be recorded in the Full Search.
Additional Information May Sometimes Be Needed
Even if all conflict uses are discovered, it can be difficult to determine the exact way the Prior Trademark is actually used in the marketplace. To determine if you will have superior or inferior rights to a Prior Trademark, you have to understand everything about the Prior Trademark, such as if a graphic is used, how long it has been used, for what product or service it used, how it is spelled, and other aspects of its use.
If the Prior Trademark and Your Trademark are similar we will need to gather much information about the Prior Trademark in order to know with a reasonable degree of certainty if you are safe. Thus, sometimes we will have to conduct a further marketplace investigation after analyzing the search.
Aggressive Owners of Prior Trademarks
My legal opinion will be based on the best interpretation of the law. Nonetheless, many Prior Trademark owners can try to object to our use even if they are on the wrong side of the law. This cannot be predicted.
When the proposed trademarks have been searched properly, you will have virtually done everything you can to decide whether Your Trademark is available for use. If you choose an inherently strong trademark and it is distinctly different from all Prior Trademarks you will have the strongest legal rights and zone of protection. If Your Trademark does not meet these standards, you have a greater likelihood that someone will object to Your Trademark. Good luck with your business and Your Trademark.
Talk to us
If we can help you or you would just like to talk to us, please call our office or send us an e-mail. References are available upon request.
We wish you the best of luck with your business!
Charles B. Brown
Charlie concentrates in IP (Intellectual Property) Law. Charlie has 37 years of experience as an accomplished attorney for businesses in diverse industries nationally and internationally, including as in-house counsel where he came to fully understand how to serve business clients best. He has served in leadership roles at the Chicago Bar Association and Association of Corporate Counsel and writes on IP topics.
He is active in North Shore civic affairs. He likes sailing, softball, platform tennis, old boys rugby, mountain climbing, and working on his 1967 Cutlass Supreme convertible with 206,000 miles.