Why It Is Critical to Conduct a Clearance Search Prior to Registering a Trademark

The Importance of Conducting a Clearance Search before Trademark Prosecution

It is hard to come up with a trademark that accurately describes your company. What’s even harder is to think of one that is unique and not already in use by someone else, to make your company stand out among the rest. So, once you decide on a mark for your business or brand, the first and the most fundamental step will be to ensure that it is available. The use or even registration of a mark without checking its availability would be a huge mistake which can cause you myriads of legal problems in the future. This makes conducting a thorough clearance search all the more important.

Get it done As Soon as Possible

Clearance searches are not something to be taken lightly. They are a compulsory precaution for both novice entrepreneurs who cannot afford to fight legal battles and well-established companies that do not want to tarnish a reputation built on years of hard work. So you should try to invest in a trademark search counsel as early in the process as possible if you find this task too difficult for you to handle alone.

What Do Trademark Clearance Searches Entail?

The objective of such searches is to find out whether or not a mark is already being used by another entity. This entity might operate in the same or even in a different (but associated) industry. It also checks databases for marks that might be confused with the trademark to be registered due to their resemblance. Even a slight “likelihood of confusion” between marks is a threat to the long-term goals of a company.

The trademark rights in the U.S are acquired in two major ways: registration and use in commerce. Therefore, it is essential to look out for existing marks that are not registered in addition to those that are listed in the state and federal registers. This process can be streamlined with the assistance of experienced professionals such as the ones you can hire at Trademark Counsels. Your counsel will help you search through domain name registers, business name registers, industry publications, and all other places where it would be hard for an average trademark applicant to search.

What Kind of Marks Should I Look Out for During a Search?

Existing marks that look even remotely similar to yours can be a potential future problem. So it would be wise to conduct a search for all the phonetic variations of your proposed mark. For example, one such word that can be spelled in multiple stylized ways is “quirk”. It might be spelled quirk, quirc, kuirk, etc. depending on the theme of the brand envisioned by its owner.

What If I Do Not Conduct a Clearance Search?

A clearance search is not a choice but a necessity. A cursory search is not enough because it might result in many similar marks being overlooked and it can lead to expensive and time-consuming lawsuits that can often bankrupt companies. The situation is made worse if the company whose rights were infringed upon owned a “famous” trademark. “Fame’ is a legal status that gives a trademark broader legal protection.

The Repercussions of an Improper Search

If you fail to carry out a proper search, you may be oblivious to another company with senior rights to a trademark resembling the one you have. You might remain unaware of this party even after the trademark registration at the USPTO because the examining attorneys at the USPTO do not search for marks that are not registered. They are neither obligated nor equipped to do so. The owner of this company might decide to sue you and involve you in an infringement action you will most likely lose. This will prove to be a grave blow to your company at a point where you are already fully invested in it. This can cause even the most financially stable companies to go under.

Contact Our Trademark Search Counsels

To discuss your trademark clearance search with a professional, contact us at Trademark Counsels by phone or online. Both flat fee and hourly fee structures are offered.