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Do I Have to ‘Search’ or ‘Clear’ a Trademark Before Use?

Written by: Catherine S. Yao

Published in the Portsmouth Herald (6/7/2020)

In the midst of starting and building a business, trademark clearance may not be at the top of your to-do list or even on your radar. Isn’t it enough that you haven’t seen another business use the same trademark, you’ve searched for your desired trademark on Google, and reserved your domain name? Although those may be good starting points, failure to adequately consider the landscape of trademarks/service marks (often referred to collectively as “trademarks” or “marks” for convenience) in your industry and marketplace could lead to major headaches down the road.

In the United States, trademark rights are ultimately developed through actual use of a mark in connection with goods and/or services. Trademarks typically protect brand names, logos, slogans, and sometimes domain names used in connection with goods and services. While trademarks can be almost any identifying or distinguishing feature, including colors, sounds, and even smells, they are most commonly words, phrases, and/or images associated with a product or service.

When considering whether to adopt a new trademark or service mark, one of the risks is that somebody else may have already obtained rights to a similar mark for similar goods or services. It is not legally required that you conduct any level of searching before you adopt a mark or file an application for registration; however, it’s prudent that you do.

Although there are numerous means and avenues for searching, a “screening” or “knockout” level search typically refers to an initial phase of searching aimed at identifying marks that are identical or highly similar to the target mark. In a screening search, the general objective is to get an idea of marks that have a greater risk of likelihood of confusion with your mark, and which might be raised, for example, by way of a refusal issued by an examiner at the US Patent and Trademark Office or through some form of conflict with a third party, such as a formal opposition to your application or a cease and desist letter. Marks do not need to be identical to your mark or used with the same goods/services to be considered problematic. When evaluating a potential conflict, the degree of similarity between the marks is weighed against the degree of similarity between the respective goods/services.

The results of a well-conducted screening search may provide invaluable insight regarding the desired mark and guide your approach for moving forward, whether you find that you’re comfortable with the apparent level of risk in the results found or ultimately decide to move in a different direction. In some cases, you may wish to conduct additional searching to get a better sense of the potential risks or further clear your mark.

On the other hand, if you move straight to filing an application without conducting any searching, you may be more likely to face obstacles at a few different points in the process, including, as mentioned, via a refusal issued by an examining attorney or a third party challenge. If such issues should arise, in addition to the time and money you have invested in the application so far, you face the added expense of confronting those hurdles unprepared or perhaps having to start over with a new mark and application.

Even if you are not currently interested in filing an application for registration, it is beneficial to have a sense of the landscape of the marks/registrations that are the same or similar to your proposed mark. After a few years of building your brand and business, you may attract the attention of a third party that has a registration pre-dating your use of the mark. Being put into a position to unexpectedly invest resources to investigate a potential conflict, develop a response strategy, and/or rebrand is often a stressful situation and an even more substantial hit to your budget. If you’re able to devote some resources upfront to thoroughly search (and, ideally, protect) your mark, you will be much more likely to be able to avoid more significant problems down the road.

An experienced trademark attorney can help you with your search strategy and provide an opinion regarding your mark’s availability for use and registration.

Catherine S. Yao is an associate in McLane Middleton’s Intellectual Property Practice Group. She can be reached at (603) 628-1380 or [email protected].

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