Why You Need a Trademark Clearance Search
A trademark clearance search is an important and recommended preliminary step before filing a trademark application. A trademark clearance search helps to identify any issues with a proposed mark before filing. A search can cover a proposed company name, brand name, product name, slogan, or logo.
A search will show whether the proposed mark, logo, etc. is identical or “confusingly similar” to an existing registered trademark, a pending trademark, or a used but unregistered trademark.
When thinking about branding, it’s important to keep in mind what makes a trademark “strong” or “weak.” As the US Patent and Trademark Office (USPTO) explains, strong trademarks are suggestive, fanciful, or arbitrary. Weak trademarks are descriptive or generic. Think about them this way. You want your trademark to be strong or “hot,” as opposed to weak or “cold.”
Fanciful trademarks are made-up words like “Kodak,” “Exxon,” and “Pepsi.”
Arbitrary trademarks are real words that aren’t normally associated with the goods or services they identify. For example, the word “Apple” doesn’t inherently have anything to do with computers or phones.
Suggestive trademarks are words that suggest some quality of the goods or services, but don’t overtly state that quality. For example, a “London Fog” raincoat is a good thing to wear if you’re in London and it’s foggy.
On the other hand, a weak trademark isn’t as effective at protecting against competitors and may not be registrable at all.
Descriptive trademarks, as the USPTO explains, “describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services”:
Some examples of descriptive trademarks are:
“Creamy” for yogurt
“Apple pie” for potpourri
“Bed & breakfast registry” for lodging reservations services
Generic “trademarks” aren’t even trademarks. They’re just the common names for goods or services, such as “Sink” brand for sinks or “Shoe” brand for shoes.
Developing a trademark without clearing it first may have dire consequences. First, experience shows that for most proposed “new” trademarks there are identical or confusingly similar ones already out there. The risk of using such trademarks is that after investment in branding one may be blocked by the owner of the prior trademark. Thus, branding a product or service and initiating a marketing and sales campaign without knowledge of third parties’ trademarks is a risky proposition.
This is where trademark clearance comes into play.
The first step in trademark clearance can be a simple Google search to see if an intended word mark is already being used and in what context. The search is, of course, more difficult in the case of a picture mark.
Specialized online resources such as the USPTO trademark database allow searches for trademark registrations and applications. Many other patent and trademark offices around the world also permit searches for trademarks registered or applied for in their territory.
It should be borne in mind, however, that such national or regional databases are applicable to a specific territory and such a search may be insufficient for global clearance. Also, these databases do not lend themselves easily to searches for trademarks that are confusingly similar.
Professional clearance searches make use of specialized databases and search techniques. While this adds costs, these are miniscule compared to potential damages that may be incurred due to the use of a trademark that is identical or confusingly similar to a prior one.
The bottom line is that a comprehensive trademark search in all relevant markets may be a wise investment.