Trademark Clearance Search: Everything You Need to Know
A trademark clearance search assesses the risk of the likelihood of a proposed trademark being associated with a mark that has already been registered.4 min read
2. Disadvantage of Not Doing a Trademark Search
3. What Is the Purpose of a Comprehensive Trademark Search?
4. How to Get a Trademark International Clearance
Updated November 16, 2020:
A trademark clearance search assesses the risk of the likelihood of a proposed trademark being associated with a mark that has already been registered with the United States Patent and Trademark Office.
What Is a Trademark Clearance Search?
It is important to do a trademark clearance search to verify whether there are any discrepancies with the trademark you're attempting to register with the United States Patent and Trademark Office (USPTO). In your search, a full review of the following trademarks should be completed:
- Existing trademarks
- Common law or unregistered trademarks
- Expired trademarks
- Pending trademark applications
- Abandoned trademark applications
When assessing a trademark's availability, pay close attention to any similar marks that may be used in association with any related services or goods. Assessing the similarity of a mark is accomplished by analyzing the aural, visual, and connotative likeness of the mark. Before applying for trademark registration or using a mark, it is recommended that you perform an adequate search to see if others are using the same trademark as your own or one that is comparable.
The USPTO grants trademark rights based solely on use alone and not necessarily on registration. Therefore, only researching the USPTO trademark database is not sufficient to determine whether your desired mark is free to use.
Disadvantage of Not Doing a Trademark Search
If you start to use your mark without a proper search, you may not realize that someone else may have already acquired the rights to your name or a similar name. Essentially, this means that your use of the trademark would be infringing on someone else's rights. This opens up the possibility of the trademark owner suing you for using their registered trademark, in which case you'll be forced to stop using the mark, according to law.
If you've already created signs, business cards, advertisements, brochures, and a website, all centered around a previously registered name, you will have invested a lot of time and money on business-related items that will all need to be redone. Additionally, a court can hold you liable for infringement and require that you pay for damages along with the trademark owner's attorney fees. Therefore, it is critical to complete a thorough trademark search to avoid potential risks, lawsuits, and wasting of money.
What Is the Purpose of a Comprehensive Trademark Search?
There are several areas to assess when conducting a comprehensive trademark search. In order to complete a thorough investigation, you must research the following areas:
- Internet references
- Federal applications
- Unregistered trademarks
- Common law uses
- Domain name registrations
- Business names
- State and federal registrations
Your search must also include spelling variations, foreign language equivalents, and phonetic equivalents. An independent search will be required for each trademark. The full comprehensive search should be done using the following resources:
- Both state and federal trademark databases
- Trade directories
- Online databases
- Internet domains
- Product catalogs
How to Get a Trademark International Clearance
Obtaining trademark international clearance can be risky and expensive. If your intent is to use a mark on a global scale, a Worldwide Identical Screening Search (WISS) needs to be completed.
The WISS documents marks that have already been published and registered in various trademark offices around the world. They provide information on the popularity of specific trademarks and help find any potential problems that may occur when trying to register a worldwide mark.
A WISS has certain limitations, including the following:
- It only looks for identical marks.
- It doesn't look for spelling variations or phonetic equivalents.
- It doesn't look at pending applications.
- It doesn't disclose what type of goods are associated with a mark.
- It doesn't assess the current status of other marks.
Vendors must pay $1,380 per trademark searched, with a turnaround time of about one day. However, if a proposed mark will only be used regionally, then a Regional Identical Screening Search (RISS) may be more appropriate. The cost for a RISS is $520 per mark.
It's also possible to complete an individual country screening search for about $120. Additional information pertaining to the services or goods surrounding a particular mark may be obtained for an additional fee, strengthening the usefulness of the search.
In cases where identical screening searches disclose problematic marks, the use of comprehensive regional searches or individual national registers is recommended. Most vendors charge between $500 to $1,200 per class/mark/country for a comprehensive national search to be performed. The turnaround time on a comprehensive national availability search is between 5 to 20 days. Key country, regional screening, and full comprehensive searches are also available.
If you need help with a trademark clearance search, you can post your legal need to UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.