Trademark clearance helps you understand whether anyone else has rights that can prevent you from developing your own trademark rights in a chosen brand name, logo, or other trademark material. Whether you’re launching a new product or a whole new company, you need to know there are literally millions of brands that came before yours and it is possible that someone else has begun using your preferred brand in a way that will prevent you from starting or growing yours. The best, cleverest, and most successful branding campaign could be for nothing if you don’t try to reduce the risk that someone else can kill your brand. Trademark clearance is the way your lawyer can help you develop a brand that brings real value to your business. If you’re ready to get started and want to schedule a free consultation with Origami Legal to discuss your trademark needs, click here.
Trademark Clearance Two Ways
You can hire an attorney to do your trademark clearance for you or you can do it yourself. If you can afford it, an attorney will do a more thorough job. If you can’t, a DIY approach is better than nothing, and I’ll walk you through some steps below.
Hiring an Attorney
This is always recommended when preparing a new brand. Your attorney will collect information and, using one or more methods, perform the search. Trademark attorneys can perform the clearance faster and they have the experience and training to know how to interpret the clearance search results. Trademark law is technical and surprisingly complex, so just performing the searches may not be helpful if the results are not obvious. A lawyer’s value add here is in providing a thorough search, selecting the relevant results and discarding the irrelevant ones, helping you understand how they impact your strategy, and advising you on how to proceed.
Note that when you’re hiring an attorney, there are likely to be several trademark search options available. More comprehensive trademark searches will cost more and take longer but are less likely to miss relevant conflicts.
DIY Trademark Clearance
A couple standard disclaimers here. First, this isn’t legal advice and you should consult with an attorney. Second, if you can’t afford to hire an attorney to do this for you, consider whether you can afford your brand launch, because hiring an attorney will probably be one of the cheaper line items in a successful branding campaign. Attorneys may not be as expensive as you think, and many of us offer free initial consultations (including Origami Legal). It doesn’t hurt to at least ask about pricing. Finally, while a DIY trademark clearance is better than nothing, it will not be as thorough as the service an attorney will provide. If you want to schedule a free consultation to discuss the matter with Origami Legal, click here.
Searching for Trademarks
The first aspect of trademark clearance is searching for similar trademarks and determining the goods and services with which they are used. While there are serious advantages to federal trademark registrations, the United States does not require trademark registration to create trademark rights. That means you need to try to look for anyone in the U.S. who might be using your desired trademark, not just those trademarks registered in the federal database. Sound crazy? It kind of is! Not all countries use our system – many other nations require registration to create trademark rights. There are pros and cons to both systems, but the important thing to know is that you need to look everywhere for conflicting trademarks.
Below are some places to look for conflicting trademarks, though its not a comprehensive list of search resources.
Federal Trademark Register
Even the most basic trademark search should include the federal trademark register. The USPTO allows for complex searching so you can look for marks similar to yours that are being used on similar goods and services. You need not register a trademark to receive trademark rights, but for a lot of reasons you still want to be sure that you check the federal register to make sure you aren’t infringing a registered mark as registered marks that conflict with your desired use are a time bomb of liability. The USPTO trademark database is a must-use resource, and you can find it here.
States have their own trademark registers, and you should check these, particularly for any states where you know you will be operating. If you plan to market nationwide, you would do well to check the registries in every state.
Internet Search on Web Search Engines
If you have a trademark in mind, the first thing you should do is Google it (or use Bing, Yahoo, etc.) If your search returns too many results, try narrowing the search down by including and limiting the search to your goods and services. For instance, if you’re launching an automotive company called “Edison” and you find that “Edison” is returning many results, your Google search might look like “edison” “cars” to increase the relevance of your search.
Also search for any obvious misspellings or puns of your name. Continuing the “Edison” example, you might search for “Eddy Son” to see if anyone is using that as a trademark.
Some industries have commercially available databases of company and product names. If these are available in your industry, this can be a good source to check to see if anyone is already using a trademark that will conflict with yours.
State Business License Databases
Business entities (corporations, limited liability companies, limited partnerships, etc.) are generally created at the state level. States maintain databases of the companies incorporated or organized in their states. Often states make these databases available for free. While forming a company with a certain name does not create trademark rights in that name, searching for companies with a similar name to your trademark can be a good jumping off point to see if they are using the name as a trademark in a way that would prevent you from using yours.
Social Media Profiles
Search social media profiles and pages for uses that may interfere with your trademark plans. If another business that is using your trademark as its handle, consider both whether that will create trademark issues and whether it will make it difficult for you to market your brand.
Check to see if anyone is using your preferred URL. Someone using the same URL does not necessarily mean that their use will prevent you from using your trademark, but it does warrant further investigation. Aside from trademark issues, you must also decide whether having to choose a different URL will hurt your marketing plans.
Interpreting the Results
Once you’ve searched various sources, you need to actually interpret your results. Sometimes this will be fairly black and white – either no one is using the trademark and there isn’t a conflict, or someone is using the trademark for the same goods and services you want to use it with in a way that impedes your own use and you have to go back to the drawing board.
In other cases, however, the results will be more ambiguous. You might find a trademark similar to yours but not the same, or for goods and services related to but not identical to yours. This can be a difficult, complex analysis and is beyond the scope of this post. In these cases, I would advise only proceeding with an attorney, but if you want to do your own analysis you should review the Trademark Manual of Examining Procedure’s sections on the likelihood of confusion. You can find that here.