Importance of a Trademark Clearance Search
A common misconception among first-time trademark applicants is that a trademark is “bought” from the government. The truth is that you are applying for your trademark with the government, and the trademark examiner reviewing your application can refuse its registration. Some trademarks are not registrable because they are generic or scandalous. Others cannot be allowed registration because there is a likelihood of confusion with an existing trademark application or registration on the federal register.
A quick Google search or a prompt to ChatGPT does not guarantee that you are safe to register your mark. Before spending hundreds or thousands of dollars on trademark prosecution and litigation fees, it is vital to consult with an experienced trademark attorney regarding a proper clearance search for your mark.
When a trademark examiner working for the USPTO is reviewing your application, they are asking the question- “Does someone have your mark, or something similar, on the related goods or services such that consumers would be confused and think the items come from the same source?”
If an examiner finds a trademark on the federal database that can potentially be a bar to registration of your proposed mark, they have to conduct a two-part inquiry:
Are the marks similar in their entireties as to appearance, sound, connotation, and commercial impression?
Are the goods or services related as described in the application or registration?
If the answer to both of these questions is yes, then the examiner will issue an Official Action refusing registration to the proposed mark.
Adding even more complexity to the trademark review process, a trademark that is cited against you does not have to look identical to your mark or even be spelled the same way. The marks only have to be similar in appearance, sound, connotation, and commercial impression. Due to this, your trademark attorney will not only conduct an exact word search on the trademark search system, but they will expand the search to find trademarks with the same wording as yours, and to look for trademarks that sound similar to yours, even if they are spelled differently.
In order to avoid trademark registration delays, it is important to consult with a trademark attorney so that they may run a comprehensive trademark search on your proposed mark before you file your application. A typical comprehensive search covers:
The USPTO database;
State trademark database;
Business name registry;
Foreign trademark database (WIPO); and
Internet search
Although the Examiner typically cites active U.S. federal trademark registrations and applications against you, a comprehensive search is important to uncover state law trademarks and common law trademark owners (owners who are using their mark in commerce without filing for federal registration). Because the United States is based on a “first to use” principle, a trademark owner who used their mark in commerce and did not file for federal trademark registration can still oppose your mark during the opposition period of your trademark application.
The trademark registration and litigation process can become costly and drawn out if proper precautions are not taken at the outset. Ordering a comprehensive trademark search before filing will give you peace of mind and assurance that there will be limited obstacles along the way.
