Why it is Critical to Conduct a Clearance Search Prior to Registering a Trademark

Once a strong and distinctive Mark has been selected, it is essential to conduct a trademark clearance search to ensure the Mark is available for filing at the United States Patent and Trademark Office. The search will look for Marks that will cause a "likelihood of confusion" with the consumer as to the source of the goods and/or services. A trademark clearance search requires the legal knowledge and understanding of an experienced legal team.

At the Law Offices of Nikki Siesel PLLC, we bring more than 50 years of combined experience and a commitment to providing detailed, efficient representation. We represent businesses and entrepreneurs in New York, New Jersey, Connecticut and throughout the country seeking trademarks in the United States and international trademarks.

The first step in developing a brand is determining a distinctive and inventive trademark that is clear for filing for registration. The objective of a trademark clearance search is to determine whether your Mark is being used by a third party, either the identical Mark or a similar Mark, in the same industry or in a related industry. Third party use of a similar Mark in an unrelated field could also prove problematic if the trademark has achieved the legal status of “fame”. Famous trademarks are afforded broader protection. The search will reveal whether or not your use of the proposed trademark will infringe upon other parties' trademark rights.

Discovering this information prior to filing your trademark application will save you money, time, resources and efforts, while eliminating potential litigation. If you fail to conduct a reasonably thorough trademark search, the consequences could be severe in nature. You may miss trademarks that may cause a likelihood of confusion with your proposed Mark.  For example, if you choose only to conduct a search in the database of the United States Patent & Trademark Office and do not know that all phonetic variations of your proposed trademark must be searched, then you can file the trademark and it may be rejected.  A worse case scenario may occur, you may be sued for infringement by a third party with senior rights to the trademark.  An example of a term with multiple phonetic variations is the term “quick”.  If this term was an element of your proposed trademark, you would need to search the following spellings of the mark: (1) quick; (2) quik; (3) quic; (4) kwick; (5) kwik; (6) kwic; etc. Without counsel from an experienced trademark attorney, you could risk exposing your company to needless litigation. Most entrepreneurs do not budget for litigation expenses. Therefore, it is worthwhile to invest in a trademark search early in the process so that you can avoid infringement lawsuits that could bankrupt your business.

Since trademark rights in the United States are acquired through registration, as well as use in commerce, it is critical to search not only the state and federal registers, but also unregistered use. This is accomplished through searching domain name registers, business name registers, industry publications, and by conducting Internet searches. If you do not search unregistered trademark use, then there could be a third party with senior rights to your proposed trademark, who could prevail against you in a trademark infringement action. Unfortunately, you may not learn about this senior user until after your trademark prosecution at the USPTO is completed and you are fully invested in the company and the brand. The Examiners at the USPTO do not conduct searches for unregistered marks, therefore this is a plausible scenario that a business owner would want to avoid at all costs.

To discuss a clearance search with an experienced trademark lawyer before registering a trademark, contact the Law Offices of Nikki Siesel PLLC. Call 914-949-9550 in New York or contact us online. We offer flat fee and hourly fee structures.