A trademark clearance is essential to the initial stages of developing and creating a trademark. A trademark clearance will identify prior use of identical or similar marks that may prevent the registration of the proposed mark. Performed in the early stages of mark development, a trademark clearance can prevent problems in the subsequent registration or use of the proposed mark. The failure to perform a trademark clearance prior to investing in a new mark could result in considerable loss of time, energy, money and goodwill in developing the mark. The cost of a proper trademark clearance is far outweighed by the costs of an application for registration that is refused based on prior use or confusing similarity, or worse, the cost of defending a claim of infringement after registration. A trademark clearance will provide the owner of the proposed mark with critical information on the registrability and use of the mark including;
- Whether the proposed mark is available for use, or whether an existing mark may be expanded to new products or geographic areas.
a. Is the proposed mark likely to cause confusion with an existing mark?
b. Is the proposed mark likely to dilute another mark?
2. Whether the proposed mark is protectable.
a. Is the proposed mark capable of distinguishing the goods and services so marked from the goods and services of others?
b. Is the proposed mark distinctive (fanciful or arbitrary) or suggestive and thereby inherently protectable? or
c. Is the proposed mark merely descriptive or generic and thereby unprotectable?
3. Whether the proposed mark is registrable.
a. Are there identical marks that have been abandoned but are still registered?
b. Are the goods or services classifications appropriate for the goods or services to be marked?
c. Are the classifications too broad for the actual goods or services provided under the mark?
A complete trademark clearance will also include;.
4. Corporate Name Clearance .
In addition to a trademark type availability search on corporate names, a complete clearance should include a review of state corporate and business entity names registered with the Secretary of State’s office, or similar state corporate and business entity registrar, in the state of incorporation and all states where the proposed mark will be marketed. This review is necessary when the proposed mark will also be used as the company name.
5. Domain Name Clearance
Aside from assuring the availability of a domain name that is based on the proposed mark, a domain name clearance should include a search and compare of the proposed domain name to other registered domaims and registered or unregistered trademarks.
Basic Trademark Research Considerations
The goal of a basic trademark search is two fold:
- To find trademarks which are the most similar in sight, sound or meaning to the proposed mark, for the most closely related goods or services that are competitive or related to those of the proposed mark.
- To find similar famous trademarks that may be diluted by the use of the proposed mark.
Prior to beginning a trademark search, the researcher must have a full understanding of the proposed mark including;
- The proposed mark and all variations of the mark.
- How the mark has been used or anticipated date of first use.
- What goods and/or services are intended to be offered in connection with the mark.
- Identification of the targeted consumers.
- Identification of the channels of trade, i.e wholesale or retail.
- Whether the mark will be used outside its country of origin.
- How the mark was selected, why the mark was selected and how it was derived.
- Whether the mark contains non-country of origin language words (which must be translated into the country of origin’s language and searched along with the proposed mark).
- Whether the mark will also be used as the company name.
- Whether the marks will also be used as a domain name.
A preliminary search, also known as a screening or knock-out search, will identify obvious issues in registering the proposed mark; e.g. it will identify prior identical marks that would prevent the registration of the proposed mark. A preliminary search is limited to a review of resources most likely to yield relevant marks with a minimum of search strategies. A preliminary search will eliminate or “knock-out” proposed marks that are clearly unavailable. In this respect, the preliminary research avoids the time and expense of a full trademark search. However, aside from a knock-out hit, a preliminary search alone will not be determinative of whether the proposed mark is available for use.
If a proposed mark clears the preliminary research, a full trademark search will ensue taking the following into consideration regarding the proposed mark;
- Variations in prefixes or suffixes.
- Irregular plural constructions.
- Corrupt spellings.
- Phonetic similarities and word play.
- Names and name variations.
- Visual equivalents.
- Alternate spellings and foreign language equivalents.
- Conduct specific country searches where the product represented by the mark will be manufactured, launched or may be imitated.