Types of Searches in Trademark Clearance
Trademark clearance searches are vital for ensuring that your mark is available, protectable, and distinctive. They help prevent legal complications down the road. These searches typically occur in two stages: preliminary (knock-out) and comprehensive (full). Understanding both types and their limitations will help you select the best approach for your needs.
Preliminary Trademark Searches
A preliminary search provides an initial assessment, ruling out marks that are clearly unavailable due to existing conflicts. Businesses can use preliminary searches to:
Narrow Down Candidate Marks: By quickly ruling out marks that would obviously conflict with existing registrations, businesses can focus resources on viable options.
Identify Clear Conflicts Early: Before investing in a comprehensive search, a preliminary screening flags major obstacles that would prevent the mark from being registered.
When Preliminary Searches Are Appropriate
In certain situations, a preliminary search may suffice, particularly when:
Limited Investment: If the business does not plan to invest heavily in a mark, potential rebranding costs are considered acceptable.
Short-Term Use: For marks intended for limited-duration or seasonal use, the preliminary search can highlight major risks without significant investment.
Budget Constraints: If a comprehensive search is out of budget, a preliminary search helps minimize immediate risks.
Limitations of Preliminary Searches
Although preliminary searches offer valuable insights, they have significant limitations:
Limited Scope: They are not designed to identify subtle variations, phonetic equivalents, or structural differences that full searches do.
Common Law Marks: They often overlook unregistered (common law) marks and names, increasing the risk of conflict.
Attendant Risks: Using preliminary search results alone for decisions on availability exposes businesses to potential legal challenges.
Comprehensive (Full) Trademark Searches
If the preliminary search does not eliminate a candidate mark, the next step is a full U.S. trademark search. These comprehensive searches are available through various vendors like Corsearch, CompuMark, and TMReady. A full search provides a deeper understanding of potential risks, allowing for better decision-making regarding registration or use.
Sources Included in a Full Search
A comprehensive trademark search generally includes sources like:
USPTO Records: Identifies registered marks and pending applications that may conflict.
State-Registered Trademarks: Uncovers marks registered only at the state level.
Common Law and Company Name Databases: Detects unregistered trademarks and business names.
Domain Name Databases: Ensures the domain name associated with your brand is not already taken.
Websites: On a limited basis, reviews online sources that may reveal other unregistered uses.
Existing Uses Identified by a Full Search
Full searches also identify a wide range of mark variations that could conflict, including:
Abbreviations and Spelling Variations: Different spellings or shortened versions of words.
Phonetic Equivalents: Words that sound similar but are spelled differently.
Punctuation and Word Construction: Unusual punctuation, word construction, or inventive use of letters.
Visual Equivalents: Logos and symbols that visually resemble existing marks.
Synonyms and Translations: Similar meanings or foreign equivalents that could confuse consumers.
Transliterations: Conversion of text from one alphabet to another.
Limitations of Full Searches
Even full trademark searches are not completely reliable. Some marks may not appear due to inherent limitations:
Common Law Marks: Some common law marks may not appear in databases used by search vendors.
Recently Filed Applications: Processing delays can result in recent applications not appearing.
Foreign Filing Basis: Applications based on foreign registrations can have effective filing dates much earlier than their actual submission, which might lead to confusion.
Comprehensive but Not Exhaustive: Search reports rely on reasoned but subjective determinations, which may not capture every relevant reference.
Conclusion
A combination of preliminary and comprehensive searches provides the best trademark clearance strategy. Preliminary searches quickly rule out obvious conflicts, while comprehensive searches offer in-depth analysis of potential risks. Even with their limitations, comprehensive searches are essential for businesses investing heavily in branding or pursuing long-term marks. AJB Law Firm, led by Amanda Bynum, can guide you through this process, offering tailored advice that balances risk and cost while safeguarding your brand. Reach out today to secure a distinctive, defensible trademark for your business.
