What is a Trademark Clearance Search?

When asked by prospective clients what a trademark clearance search is my first response is usually to explain that it is akin to insurance for your trademark filing and eventual trademark use.
 
For those new to the IP world, there are a few points to start with about trademarks that will help explain the following discussion on clearance searches (and opinions, more below). First, trademarks (or marks) are used to identify your goods or services and distinguish your goods and services from competitors in the marketplace. A second point is that while using the exact same name on the exact same goods or services as another person will clearly causes problems (potential registration rejections and infringement), so to can using similar marks on similar goods and services. So, while most people will recognize the problematic nature of a duplicate mark on the same goods and service, it is more difficult to understand the relevance of similar marks on similar goods and services. The importance of the level of similarity becomes the focus of the trademark clearance opinion letter discussed further below. A third point that is often not intuitive to first time trademark filers is that the USPTO employs classes to distinguish the types of goods and services upon which the mark will be employed. Similar goods and services are grouped together to facilitate the searching. For example, spoons, forks and sponges, are grouped together in class 21 (household goods), and T-shirts, sweaters and pants are grouped in class 25 (clothing). You can file, and have your mark searched, in multiple classes if you are employing the mark on different goods and services, however, this will increase the filing and searching fees, as well as the possibility of conflicts with similar marks. One significance of the classes is that if a third party mark that is similar to your mark is also listed on a good or service in the same class as your mark it will increase the relevance of what is referred to as “the likelihood of confusion” and ultimately may lead to a potential filing rejection or finding of infringement.             
 
So, what is the clearance search and how is it done? The clearance search can be done completely in-house by an attorney (with or without help from staff/paralegals/assistants) or, and this is by far the more prevalent current method, the search can be conducted by a third-party software-based search firm. The search will generally cover United States Patent and Trademark Office (USPTO) registered trademarks and pending applications, U.S. state trademarks, domain names, social media pages/usernames, websites, and general internet searches. These searches can be expanded (at additional cost) to foreign trademark databases. Typically, these searches cost about $150-$500 depending on whether the mark is a word mark, logo mark, combination word/logo mark, the number of classes of goods or services being searched, and whether the search will cover foreign registrations (this is the estimated search firm fee, not the cost for the attorney to review and opine on the search results).
 
The reason third-party searching firms are used for most clearance searches is that they employ well tested software that runs algorithms that can generate detailed reports in minutes that would take human researches hours if not days. Additionally, the software not only searches for the exact word or logo (think direct hits), but also similar sounding words including spelling variations, e.g., “Quick” and “Kwik” for word marks, and variations on images for logos. Similar sounding word marks and similar looking logos being employed on the same class of goods or services are highly relevant when it comes down to interpreting the trademark clearance search.
The clearance search will generally be divided by the different databases searched (e.g., U.S. registered trademarks, state trademarks, domain names, etc.…). Then within each category the results will be ranked in level of relevance from: (i) direct hits (same word/image); (ii) words or phrases that contain one or more of the base words/images from the searched mark; and (iii) similar sounding/looking marks. Further, because the search will have been based on the class (or classes) of goods and services upon which the mark will be employed the closer the goods and services of the similar mark are to the goods and services of the searched mark the greater the relevance of the results.
     
If there are exact hits on exact goods and services often the best course of action will be to pick a new trademark and start over. However, if there are no directly conflicting marks in the same class of goods and services you will still need to weigh the results of the search. This is where the trademark clearance opinion letter enters our discussion.
 
A trademark attorney will review and analyze the results of the clearance search and prepare a trademark clearance opinion letter. The letter will weigh the significance of the search results and provide a legal opinion, not a guarantee, but a reasoned understanding based on the facts and the law. The opinion letter may be primarily directed towards success in obtaining registration of the mark before the USPTO, towards non-infringement of competing marks (a/k/a “freedom-to-operate”), or combinations of both. While there is much overlap between the two analyses, a complete freedom-to-operate opinion will usually be more involved (and costly) than a likelihood of registration opinion.  
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Now back to our original discussion about “insurance”. A positive clearance opinion letter should give confidence to the trademark filer/user that they will have a good chance of obtaining registration and hopefully not infringe any existing trademarks when they market their goods and services. A negative clearance opinion letter will suggest that the trademark filer/user may want to think about choosing a different mark. Of course, there will be degrees of clearance opinions from highly positive to highly negative based on the facts of the search results. While there are costs associated with the clearance search and the opinion letter, these can be drastically outweighed by lost funds spent on rejected trademark applications, the costs of having to rebrand, and/or the costs of potential trademark infringement. So, think of the clearance search and opinion as insurance on your trademark. If you feel the costs of the insurance outweigh the value of the mark it may not be worth it for you, but if you think the mark is going to be highly valuable to your business it may be worth paying something up front to insure your branding costs and assist in avoiding infringement down the road.
 
If you are interested in filing a trademark or if you need advice on a trademark already in use it is highly advisable to consult an experienced IP attorney to discuss your individual needs and goals. If you have any questions about trademarks, clearance searches, or opinion letters, and would like to discuss protection and registration please contact me at [email protected] or visit my website at www.chiaraiplaw.com