About Trademark Law

What is a Trademark Clearance Search?

Before using or seeking to register a trademark, it is advisable for an attorney to perform a trademark clearance search using a specialized search engine. 

The benefit of performing a preliminary search is to avoid 1) infringement upon the common law rights held by the owner of a similar mark and 2) the cost of delayed rejection by the USPTO.

Infringement upon common law rights occurs when someone uses a mark in connection with the sale of goods and services when that mark is already in use. If found to be infringing up on the rights of another mark owner, the penalty is payment of the infringer’s profits, and can include additional penalties. The final bill may be enough to put you out of business. (15 U.S.C. §§1114, 1116-1118.)

After filing a trademark application, it may be six (6) months or more before the USPTO informs the applicant of a potentially conflicting mark, and it could take over one (1) year for the USPTO to make a final decision that the mark is unavailable. Rebranding after twelve (12) months or more is costly and avoidable with a pre-emptory search. (See How do I register a Trademark?)

A handful of companies offer trademark searches that deliver an large amount of data. In order to make the search effective, to capture confusingly similar marks, it is recommended that an attorney sufficiently narrow the search variables and interpret the complex data.

Is a Google Search Sufficient?

No. Google displays sites based upon PageRank. Website displaying a mark are overlooked in Google search results. Google searches may not capture off-line use of the mark.

Is Your Search of the USPTO Database (“TESS”) Good Enough?

No. Unless your search captured all forms of confusingly similar trademarks, including spelling variations (HARTMANS for HARTSMAN), phonetically similar marks (FYRE for FIRE), and marks with compound elements (SUN ENERGY v. SUN). Trademark search companies specialize in performing searches which capture such variations, for a small fee.

What is a “Full” Search?

A “Full” search refers to a search offered by many trademark search companies which includes not only a database of USPTO registered trademarks, but also state registered trademarks and trademarks not registered at all. Commonly, this includes a search of domain names and a deep search of the internet, along with various proprietary databases compiled by data amalgamation companies. Additional industry specific databases can be tacked on, often for a small fee. For example, a pharmaceutical search is offered which specifically looks at databases of prior drug names.

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