As a trademark search service provider we came across many instances, wherein, clients complain that trademarks they have grown to love are likely to encounter obstacles during the registration process. After analyzing all such cases, we came to the conclusion that lack of trademark clearance search could be the main culprit wherein companies or its trademark search service providers have skipped the important trademark clearance search process and relied only on knock out trademark searches.
Speaking simply, a knock-out trademark search is required at minimum; still, companies should do a comprehensive trademark clearance search to assess if their intended mark is available, if yes, then whether they will be able to protect it or not, if it is protectable then what could be the scope of protection, means whether the protection will be weak or strong. Finally, an effective trademark clearance search lets the searcher know various possible potential conflicts that may arise down the line and remedies to address such conflicting issues.
All we are trying to say is, that while everyone should do their own knock-out search, at a minimum, before deciding whether or not to adopt a trademark as their own, the knock-out search is only the first step and there are more things to be done and learned. A clearance search addresses all such issues.
Databases and resources for doing trademark clearance search:
Though the scope of a Trademark Clearance Search can vary widely, still, a typical trademark clearance search involves searching following databases and resources:
- USPTO database (TESS)
- State registrations -all 50 states
- Business names databases
- Trade name databases
- Online databases and industry publications directed to the goods or services being searched
- Domain name databases
- Search engines
Purposes of doing a trademark clearance search:
A complete and efficient trademark clearance search meets various purposes but some of the important ones are:
Analyzing availability- Ascertaining availability of an intended mark is one of the foremost and important purposes a trademark clearance search achieves. With this, the intended term is searched on various trademark search databases to assess if the term is available for registration/use/ or both. If the term is already taken up by some other entity it may not be granted trademark. The term ‘may not’ needs to be stressed here, because, even if a mark is already taken up by some other players, still, you can get that term registered, depending on whether it is active or dead, or whether its scope is limited geographically, or whether the existing mark is filed under different class of Goods. All these points should be taken into consideration during a trademark clearance search.
Determining the likelihood of confusion is another important thing that should be addressed during the trademark clearance search wherein we assess if two terms that are textually not exact can likely cause confusion among buyers, under such circumstances the intended mark may not go through the registration process. Thus we also search for phonetic terms that may likely cause confusion.
Assessing protect-ability: Like availability, the term protect-ability is a broad term that has a comprehensive and dynamic meaning. Depending on the nature and characteristics of the intended mark the protection can either be narrow or strong that can only be analyzed by a professional trademark search service provider those are doing trademark search days in and days out.
Analyzing potential conflicts: A trademark clearance search also let searcher choke out potential conflicts that the intended mark may encounter down the line and remedies the owner should adopt to address such situations.
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