Key Takeaways

  • A trademark clearance search helps assess the risk of trademark infringement before using or registering a mark.
  • Skipping a search can result in legal action, rebranding costs, and loss of brand value.
  • A comprehensive search involves reviewing USPTO records, common law marks, domain names, social media, and international databases.
  • Specialized searches like knock-out searches and full availability searches serve different purposes depending on your business goals.
  • International trademark clearance requires region-specific tools and databases for reliable global protection.
  • Consulting with a trademark attorney ensures accuracy, legal compliance, and strategic brand protection.

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.

Types of Trademark Clearance Searches

There are multiple types of trademark clearance searches that serve different levels of risk assessment:

  • Knock-Out Search: A preliminary search to quickly identify obvious conflicts with existing trademarks, usually limited to the USPTO database. It’s useful early in the naming process.
  • Full Availability or Comprehensive Search: A detailed review of federal, state, and common law sources, domain names, social media platforms, and international databases to identify potential conflicts. This is essential before filing a trademark application.
  • Common Law Search: Focuses on unregistered uses of a trademark in commerce. This is crucial since trademark rights can be established through use, even without federal registration.
  • International Clearance Search: Evaluates risks of using a mark in other countries. It includes searching databases from the World Intellectual Property Organization (WIPO) and relevant national trademark offices.

Each type of search provides a different level of protection, and combining multiple search types provides a more comprehensive risk analysis.

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.

Real-World Consequences of Inadequate Searches

Failing to conduct a proper trademark clearance search can lead to serious setbacks:

  • Enforcement Actions: You could receive a cease-and-desist letter or face litigation for infringement.
  • Rebranding Costs: Redesigning logos, marketing materials, and packaging can be costly and disruptive.
  • Loss of Goodwill: Customers may become confused or lose trust if a brand must suddenly change its name.
  • Delayed Market Entry: Trademark disputes can halt product launches, especially in international markets.
  • Limited Expansion Opportunities: Discovering conflicts later could block your ability to expand geographically or into new product lines.

A well-executed trademark clearance search helps you avoid these setbacks before making costly investments in branding.

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:

Elements to Include in a Thorough Clearance Strategy

To maximize protection and reduce the risk of conflicts, a well-rounded trademark clearance strategy should evaluate:

  • Direct Matches and Similar Marks: Analyze spelling variations, phonetic equivalents, plural forms, and foreign translations.
  • Goods and Services Categories: Assess whether similar marks are used in related or overlapping product classes.
  • Design and Logos: Consider visual similarities in stylized marks or logos, which may cause confusion even if the names differ.
  • Domain Names and Social Handles: Check for registered domains or social media profiles using similar names.
  • Linguistic and Cultural Considerations: In international markets, meanings and associations in local languages must be reviewed.

It’s also essential to document your findings for internal recordkeeping and to support future trademark applications.

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.

When to Hire a Trademark Attorney

While DIY searches offer a starting point, hiring a trademark attorney significantly improves the accuracy and reliability of your trademark clearance process. Attorneys can:

  • Interpret nuanced similarities and likelihood of confusion risks.
  • Access professional-grade search databases.
  • Analyze international trademark law complexities.
  • Advise on trademark classification and application strategy.
  • Assist in responding to office actions or legal challenges.

For businesses expanding across states or borders, the legal insight of a trademark attorney helps you mitigate risks from the outset. You can find experienced trademark attorneys through UpCounsel’s marketplace to ensure your brand is fully protected from the beginning.

Frequently Asked Questions

  1. What is the difference between a knock-out search and a comprehensive search?
    A knock-out search identifies obvious conflicts in the USPTO database, while a comprehensive search examines federal, state, and common law sources, plus domain and international databases.
  2. Is a trademark clearance search legally required?
    No, but it is highly recommended to avoid infringement and legal disputes.
  3. Can I conduct a trademark search on my own?
    Yes, but professional searches by attorneys or search firms are more thorough and legally reliable.
  4. What databases are included in a comprehensive search?
    These may include the USPTO, state databases, WIPO, EUIPO, domain registries, business name databases, and more.
  5. How often should I perform a trademark clearance search?
    Before any new brand launch, product expansion, or market entry—especially if entering a new country or industry.

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.