Trademark Search & Clearance
You want to protect your business’s brand. Maybe you’ve already been using a brand name and/or logo, or perhaps you’re considering whether to use one for a new business you’re starting. Either way, it’s time to consider registering for trademark protection.
(You can learn more about the benefits of trademark protection in an earlier post: “Do I need to Register My Trademark?”)
The first step toward protecting your business mark is to search for others who may be using a mark and assess whether you’ll likely be able to register your mark with the United States Patent and Trademark Office (USPTO). The search and clearance process is the focus of today’s post.
We start with why this process is important.
Reasons To Search & Clear Your Mark
You may be tempted just to apply for trademark registration rather than spend the time or money on an attorney to perform a search and clear the mark. But it’s reckless to file blind. If your application is denied (a scenario touched on in this post on Colin Kaepernick’s trademark application), you may waste a year or more of building equity in your brand, only to be forced to change. In most cases, the cost of rejection far outweighs the cost of paying an attorney for a few hours of work on the front end.
You may also be tempted just to use your mark and not bother with trying to get it registered. This could be even worse for you. In addition to the loss of brand equity if you’re eventually forced to change, you could face exposure to liability for infringement if someone else has the trademark and pursues damages against you. All in all, you’re better off investigating whether your mark is available for use and, if so, whether it qualifies for registration.
How To Determine If Your Mark Is Available
Trademark rights come from using the mark. Trademark owners who use the mark in commerce generally have the right to keep others from using their mark, as well as the right to keep others from registering the mark. So, why bother with registering the trademark if you already have the rights to it?
Trademark owners register their marks because it provides them with a powerful means of demonstrating and enforcing their rights. It’s a public acknowledgment of the owner’s right to the mark, signalling to others that it’s not available for use. So, to determine whether the mark you want to use or have been using is available for registration, you need to see if someone else has already registered it. This requires some digging.
There are both free and paid databases that may be used. Popular free databases include search engines like Google and Bing, the USPTO’s searchable online database, secretary of state databases, and others. If after searching free databases you haven’t found any conflicting marks, it may be worth using paid databases, as they offer more comprehensive coverage, though many choose not to because paid databases can be quite expensive. Popular paid databases include Corsearch, SAEGIS, and others.
The search process is meant to identify marks that could cause confusion with your mark. It sounds like a simple process, but there can be an art to crafting the right kind of search that captures all the relevant information. And once the results come in, there’s often plenty of subjectivity in assessing whether there’s a likelihood of confusion between your mark and similar marks—a common basis for the USPTO to reject an application for registration.
This is where trademark lawyers earn their fee. They can provide you with an informed opinion on whether existing mark(s) could prevent you from successfully registering your mark. In turn, you can make an informed decision on whether to pursue registration or to focus on building up brand equity under a different mark.
How To Determine If Your Mark Can Be Registered
Your mark may be available, but that’s not the end of it. Certain types of marks don’t qualify for registration, and so you’ll need to determine whether your mark meets the requirements for registration on the USPTO’s Principal Register.
Tip: A trademark registered on the Principal Register has the highest level of protection. Trademarks that don’t meet the requirements for registration on the Principal Register may still qualify for registration on the Supplemental Register, but they will have a lower level of protection.
Marks that are considered “inherently distinctive” provide the best bet of qualifying for registration on the Principal Register. Examples of these include brand names like XEROX and KODAK, which were made up for the purpose of functioning as trademarks and are otherwise meaningless. However, you don’t have to make up a meaningless name to qualify as inherently distinctive. Marks that are “arbitrary” (e.g., APPLE for computers) or “suggestive” (e.g., MICROSOFT suggesting software) can also qualify.
On the other end of the spectrum, marks that are considered merely “descriptive” are unlikely to qualify for registration on the Principal Register. Descriptive marks are ones that clearly communicate something about the product or service (e.g., E FASHION for electronic retailing services). Because merely descriptive marks fail to identify the source of the goods or services provided, they don’t qualify for registration on the Principal Register, unless a showing of “acquired distinctiveness” can be made.
Tip: To show “acquired distinctiveness” of a merely descriptive mark often requires multiple years of large-scale use, sometimes in competition with others in the same market, making it an undesirable option for most companies.
Other marks that generally don’t qualify for registration on the Principal Register include those that are geographical places, surnames, superlatives, and industry-related acronyms.
With all of these subjective requirements, it’s often beneficial to have the advice of a competent attorney before applying for registration.
Your brand is important, and it’s important that you take steps to protect it. The first step to take is to find out whether your brand is really your own. Only then should you take the next step of seeking to protect it by applying for registration.
Once you’re ready to apply for registration, take a look at this post for a step-by-step guide.