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Is a Trademark Clearance Search Worth the Added Cost?
This is probably the most common question that we receive from potential clients. Eager to “get trademarked,” many have already conducted what they think is a sufficient pre-application trademark clearance search: a Google search and maybe a fumbling search of the US Patent & Trademark Office’s (USPTO’s) TESS database.
This is what is known as a knockout search. It is something that one can do without an attorney as a preliminary matter. If you search TESS or Google and locate your exact or a very similar iteration of your proposed mark registered or in use, that may tell you from the get-go that you need to re-tool your brand.
If the results are more fuzzy than that or if you want to be sure that you are not infringing on anyone else’s registered trademark or that you are not risking a third-party opposition action to your application once filed with the USPTO, a full clearance search conducted by an experienced trademark attorney is highly advised.
What Does the Trademark Clearance Search Accomplish?
The full clearance is much more broad in scope than the knockout search.
The third party search services utilized by most trademark attorneys will scour TESS in multiple classes, search live marks, dead marks, foreign registrations—everything—searching not only for exact matches but also uncomfortably close matches.
The clearance search will then scour the trademark registration database of each of the 50 states, including Michigan’s, as well as the web and social media for other appearances of the mark in other contexts.
The search report that The Hilla Law Firm retrieves is voluminous and requires expert scrutiny.
It is important to remember that the US is a “first in use” jurisdiction when it comes to trademark protection, meaning that a mark that is used first in interstate commerce is the mark that is entitled to trademark protection, not simply the mark whose owner hurried and filed an application with the USPTO first. The US is not a “first to file” jurisdiction.
That means an inexpert TESS search is generally insufficient and may result in a trademark application filing with poor odds of success and wasted brand development capital.
Yes, the USPTO examiner reviewing your application will consider only marks on the Federal trademark register, but 3rd party mark owners and monitoring services who are seeking to protect their registered brands need not.
From a glossing over of non-Federal Register mark appearances blossoms plenty of infringement and opposition litigation.
What Will My Trademark Attorney Do with the Search Results?
With that voluminous report retrieved in hand, your trademark lawyer will conduct an analysis of the results and provide you with an Opinion as to the risk of filing a trademark application with the USPTO.
The Hilla Law Firm presents its clients with a detailed Opinion Letter discussing the risk points discovered in the trademark clearance search.
In the drafting of the letter, we will peruse each of the individual results obtained in the search report and, based on our professional expertise, we will pinpoint the “problem results” that affect your application, describe the nature of the problem in each instance, providing a copy of the problematic registration, as well as the full trademark clearance search result report.
Ultimately, we will provide you a “high,” “medium,” or “low” risk assessment with regard to your proposed Federal trademark application so that you can elect to proceed—or not—on a fully educated basis.
Trademark Clearance Searching: The Bottom Line
The bottom line with regard to trademark clearance searches is that they are optional but are highly advisable.
For the trademark attorney, the decision to file a trademark registration application for a client who insists on proceeding without a full clearance search carries a malpractice risk. Generally, an attorney will require sign a waiver before proceeding, if the attorney agrees to proceed at all in that circumstance.
It is in your best interest to retain a trademark registration attorney to conduct a full and proper trademark clearance search.
Thousands of dollars, if not more, are spent on developing a brand. Once developed, the website, advertising, promotional products, stationery and envelopes, etc., all follow, carrying that brand.
The last thing you want to do is put the cart before the horse and spend that brand development capital before ensuring that the brand can even be protected with trademark registration.
The Hilla Law Firm is located in the Detroit area but represents clients nationally for trademark matters and offers free video or telephonic consultations.
If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us at (734) 743-1489 to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.