Importance of Your Trademark Clearance for Trademark Registration
So many times in my three decades of practice, I’ve shaken my head at the perils a trademark owner can so easily avoid by searching and erasing a trademark. Litigation ! Unnecessary legal fees! Wasted time and resources! All because my client (or opponent) did not perform a proper trademark search.
Adopt a brand
So why all the fuss? Well, before you adopt a trademark (i.e. a brand name for goods or services), you should have a lawyer commission a proper clearance search, review it, and provide you with a reasoned opinion as to the availability of the mark for “use” and “registration”. (Yes, these are different things, as explained below.) I am not talking about an Internet search or an online search for US Trademark Office registrations, although both can be helpful in ensuring there are no easy-to-find obstacles to using or registering a trademark before a full search be ordered.
I am talking about a full clearance search by a reputable provider that the attorney commissions to uncover all uses (registered and unregistered) of the same or similar marks for the same or similar goods/services for which you wish to use your mark . The resulting vendor report sent to the lawyer is typically between 300 and 1,000 pages. Then the lawyer (experienced in trademarks) examines it and lets you know in a detailed opinion whether the trademark is free to use and register without involving you in the risk of a dispute/legal action. If it is not available, you choose another brand and search again.
Use a trademark and register it
So what is the difference between the freedom to use a mark and the freedom to register it? In the United States, common law trademark rights may exist solely on the basis of use (ie use of a trademark without registration). Indeed, consumers can associate a brand with a single source (the brand owner/producer of goods/services) even if it is not registered. (It’s different in other countries, and searches should be done in each country you want to use your trademark for.)
It is therefore possible that there is an obstacle to use but not to registration, because a common law mark (unregistered) is too similar to the mark you wish to use and is used in connection with goods / identical or related services to the brand you offer. That’s why you want permission to use and register a trademark. (Registration is important because it gives you national rights to your mark; common law marks only cover the geographic territory where sales under the mark take place.)
So please clear your mark. It’s pennies on the dollar compared to what you’ll spend in a dispute or litigation (God forbid). Good research !
©2022 Norris McLaughlin PA, All Rights ReservedNational Law Review, Volume XII, Number 35