Trademark Clearance Research

The Importance of Trademark Clearance Research

When choosing a trademark for your new company or brand, you cannot simply pick a name and run with it. In the United States, trademark rights are exclusive—once one company picks a trademark, other companies are prohibited from choosing a “confusingly similar” mark. This does not mean that no two companies can have similar trademarks (just look at the number of registrations for common terms like “pinnacle” or “element”), but it does mean that companies that offer similar or related goods or services will generally be prohibited from using similar marks.

So, how do you avoid selecting a trademark that is already “taken”? The answer is trademark clearance research.

What is Trademark Clearance?

Trademark clearance is the process of investigating to determine whether your chosen trademark is available for use in your intended market. At a high level, this involves searching the U.S. Patent and Trademark Office (USPTO) database for any pending or registered confusingly similar marks. “Confusingly similar” does not mean identical, so these USPTO searches should be much broader than merely your specific chosen term or design.

However, since certain trademark rights are automatic (in other words, they arise upon use of a trademark even without registration), it is important to search non-registered trademarks as well. There are a number of search services out there that will scour the internet and various other sources for any potential pre-existing uses of your chosen trademark, and our trademark attorneys can order a comprehensive search report which we will then review to determine whether there are any conflicts that might counsel against adopting the researched mark.

What are the Risks if You Don’t Clear Your Trademark?

Failing to clear a new trademark carries a number of potential risks. Some of these include:

• Infringement – If you choose a trademark that is confusingly similar to a third party’s existing mark, you run the risk of facing a lawsuit for infringement.
• Limited Use – Even if you steer clear of infringement (for example, if the pre-existing is unregistered, which would mean that its owner only has the automatic geographically-limited rights), your use rights could still be severely limited. One of the benefits of choosing a strong trademark is consistent brand recognition, and you could face significant challenges in building your brand – especially online – if someone else has “prior” rights in a certain area.
• Lack of Exclusivity – On the same token, if someone else has pre-existing rights in your chosen mark, this means that you won’t have your name to yourself.
• Inability to Register – If the pre-existing trademark is registered with the USPTO, you may be precluded from registering your mark in connection with some or all of your goods or services.
• Loss of Capital and Goodwill – Finally, and in some respects most importantly, you do not want to roll out a new trademark only to find out months later that your mark is not available for use. By performing thorough clearance research up front, you can avoid the issue of having to rebrand because someone else beat you to the punch.

Of course, you may not have any issues, and the hope is always that your chosen trademark is available for use. But, if you roll the dice and choose not to clear your new mark, you could end up paying in more ways than one.

Faier & Faier P.C. | Experienced IP Attorneys for Trademark Clearance and Registration

If you have questions about trademark clearance or registration, we invite you to contact us for more information. At Faier & Faier P.C., we provide trademark services throughout the United States and in more than 80 countries abroad. To speak with a trademark attorney, call our offices at (312) 382-9500 or send us an email today.