Performing your own trademark search.
A. Can I Just Apply for a Mark With the USPTO?
B. Trademark Search and Clearance
C. Trademark Screening Searches
D. Full Trademark Searches
E. Trademark Search Investigation
F. Trademark Clearance Legal Opinion Letter
G. Are there any shortcuts to trademark searching?
H. Is There Any Guarantee With Trademark Searches?
I. What if the Trademark Search Turns Up an issue with my Mark?
A. Can I Just Apply for a Mark With the USPTO?
A clearance effort involves conducting a thorough search to determine whether a proposed trademark is already in use or registered by another party.
If a business submits a trademark application without conducting a clearance effort, they run the risk of investing time and money into branding and marketing efforts that may ultimately be precluded due to trademark infringement. In such a scenario, the business may be forced to rebrand, which can be costly and time-consuming.
Conducting a clearance effort prior to submitting a trademark application can help businesses avoid potential conflicts and infringement issues. It allows them to identify potential conflicts early on and make informed decisions about their branding and marketing strategies.
1. The USPTO examines trademark applications to determine if the proposed mark is likely to cause confusion with an existing trademark that is already registered or has a pending application. If the USPTO finds that the proposed mark is identical or confusingly similar to an existing mark, the application may be denied.
2. Registration of a trademark with the USPTO provides the owner with certain rights, such as the right to prevent others from using the same or confusingly similar mark in connection with similar goods or services. However, it does not necessarily guarantee that the mark can be used without any risk of infringing on the rights of others. There is always a risk that a third party may claim that they have prior use of a similar mark in commerce and may attempt to stop the owner of the registered mark from using it. In some cases, a third party may have common law trademark rights in a mark, even if they haven't registered it with the USPTO.
Conducting a thorough trademark clearance process before submitting a trademark application can help businesses minimize the risks associated with trademark infringement and potentially avoid much higher costs down the road.
By investing in a clearance effort prior to submitting an application, businesses can identify potential conflicts and make informed decisions about their branding and marketing strategies. This can help them avoid investing significant resources in branding and marketing efforts that may ultimately need to be changed or abandoned due to trademark infringement.
B. Trademark Search and Clearance
The benefits of a trademark search and clearance include:
1. Knowing if your proposed name, logo, or slogan is strong: A trademark search can help you determine if your proposed mark is likely to be successful in the registration process and in the marketplace. It can also help you identify potential weaknesses in your mark that you may want to address before submitting an application.
2. Protecting your investment in your branding and marketing: By conducting a trademark search and clearance, you can avoid investing significant resources in branding and marketing efforts that may ultimately need to be changed or abandoned due to trademark infringement.
3. Avoid loss of the USPTO filing fee: If your trademark application is denied by the USPTO due to a conflict with an existing trademark, you may lose the filing fee that you paid to submit the application. Conducting a clearance effort before applying can help minimize the risk of this happening.
4. Shortening the timeline for approval of your application: By conducting a trademark search and clearance before submitting an application, you can help identify potential conflicts early on, which can help speed up the overall registration process. This can be especially important for businesses that need to quickly establish trademark rights in their brand.
The goal of the trademark clearance process is to identify any existing marks, whether registered or not, that may conflict with the proposed mark. This includes marks that are currently in use in commerce and that are identical or confusingly similar to the proposed mark.
It's important to note that a mark can refer to any distinctive sign that identifies the source of goods or services. This includes not only names, logos, and slogans, but also other elements like designs, colors, and sounds that can be used to distinguish a brand in the marketplace.
By identifying potential conflicts during the clearance process, businesses can make informed decisions about whether to proceed with their proposed mark, make changes to their mark to avoid conflicts, or potentially negotiate with other trademark owners to resolve any conflicts that arise. This can help minimize the risks associated with trademark infringement and ensure that the proposed mark is strong and enforceable in the marketplace.
C. Trademark Screening Searches
During this phase, a search is conducted through the USPTO's online database of registered marks to identify any potential conflicts with the proposed mark. Additionally, a brief search for similar marks on search engines may also be performed to identify any potential conflicts that may not be registered with the USPTO.
The screening phase is important because it provides an initial assessment of the availability of the proposed mark. If an identical or confusingly similar mark is already registered for similar goods or services, it is unlikely that the proposed mark will be registered by the USPTO. This saves time and resources by identifying potential conflicts early in the clearance process.
If the screening phase does not uncover any potential conflicts that would lead to advice against using the proposed mark, the next step is usually to conduct a more thorough "full" search. This involves a more comprehensive search of various databases and sources to identify potential conflicts that may have been missed in the screening phase.
D. Full Trademark Searches
During this phase, a third-party vendor with advanced search tools is retained to conduct a comprehensive search beyond the USPTO database of registered marks. This search includes state registrations and common law sources to identify any potential conflicts with the proposed mark.
The full search phase is highly recommended because it helps identify potential conflicts that may not be registered with the USPTO but still have priority of use. This minimizes the risk of infringing on the rights of a third party and helps ensure the proposed mark is available for use and registration.
Based on the results of the full search, there may be several options for the next steps. The application may be able to move forward without any modifications if there are no conflicts found. Alternatively, if conflicts are found, modifications to the application may be necessary, such as changing the mark or the categories of goods and services. In some cases, further investigation may be needed to determine if the conflicts identified can be resolved or if an alternative mark should be considered.
E. Trademark Search Investigation
If we need more information about an existing mark, such as how it's used, its date of first use, its current use or abandonment, the goods and services it covers, and its geographic reach, we recommend conducting an investigation.
The full search may reveal a state registration, a domain name, a social media account, or other references without sufficient information about the mark's use or abandonment, or a mark may have been abandoned without appearing as such in the full search report. The goal of the investigation is to assess the risk of proceeding with the proposed name, logo, or slogan.
Based on the findings of the investigation, we may recommend:
1. moving forward with the trademark application;
2. modifying the application; or
3. abandoning the proposed mark and seeking registration for a different mark.
F. Trademark Clearance Legal Opinion Letter
After completing the trademark search and investigation, if we determine that the proposed mark can be registered and used without infringing on another mark, we can draft a legal opinion letter regarding the availability of the mark for registration and use in the U.S. This letter can be used to support a client's investment in their branding and marketing and provide them with the assurance that the mark is not likely to be challenged by a third party.
Benefits: The clearance legal opinion letter can serve as evidence in a trademark lawsuit to show good faith and minimize potential damages. By having a legal opinion letter, clients can reduce their exposure to costly damages such as attorney's fees, punitive damages, and lost profits. Furthermore, it gives clients confidence in their branding and marketing efforts without fear of a third-party infringement claim.
G. Are there any shortcuts to trademark searching?
It is important to note that while the process outlined above provides the highest level of protection for your branding, not all clients engage in the same level of clearance search. The extent of the search may vary based on a client's budget and tolerance for risk. Generally, the more extensive the clearance search, the less likely a third party will be able to enforce superior rights in the future. Your tolerance for risk may depend on the amount of investment you make in your branding and the potential costs, both in terms of time and money, if a third party were to successfully challenge your use of your chosen name, logo, or slogan. Ultimately, it is important to weigh the potential risks and benefits carefully to make an informed decision about the level of clearance search that is right for your business.
H. Is There Any Guarantee With Trademark Searches?
While conducting a comprehensive trademark search and clearance can greatly minimize the risk of a third party having superior rights to your proposed mark, it cannot completely eliminate that risk. There may be instances where a third party with superior rights is not identified during the clearance process, or where a third party may assert rights to a mark after the mark has been registered or used in commerce. In such instances, it may be necessary to engage in legal proceedings to defend your rights to the mark or consider rebranding to avoid infringing on the third party's rights. However, conducting a thorough clearance search can greatly reduce the likelihood of these situations arising.
I. What if the Trademark Search Turns Up an issue with my Mark?
It is always a good idea to have a backup plan in case the primary trademark faces challenges during the clearance process. This can save time and resources and allow for a smooth transition to the backup trademark, should it be necessary. It is important to approach the trademark clearance process with a flexible mindset and be open to exploring alternative options if needed.