A quality trademark clearance search is the foundation for a successful trademark application. The reason a trademark clearance search is fundamental is because a search produces a legal search report. That report will you if there are any conflicts with your trademark, and a trademark that is either registered or pending at the United States Patent and Trademark Office (“USPTO”).
Generally, filing a trademark without a search is not a good idea unless:
- A licensed attorney has previously conducted a search, or
- You expended considerable financially investment in a name, and are unlikely to change it no matter the circumstances.
Below, I explain why my comprehensive trademark clearance searches provide significant value
Why Is a Trademark Clearance Search Necessary?
A trademark clearance search is the basis for filing a trademark application with confidence. If there is no search, then there is high risk that the USPTO may reject your trademark. For example, if no search is involved, your trademark application may receive:
- a suspension letter, which means that the USPTO found a pending trademark within its database (the entire trademark process takes between 10-14 months); or
- a likelihood of confusion refusal, which means that the USPTO applied the DuPont legal test to your trademark and found that is so similar to another trademark. The test looks at appearance, sound, commercial connotation, International Class, and or Goods and/or Services for similarities.
How Are Your Lookup Services Different From Other Trademark Services?
Unlike other trademark services, my searches are comprehensive. Comprehensive trademark clearance searches differ from “direct hit” or “knock-out” searches. If you see a law firm or trademark filing company offer these services, you should decline. “Direct hit” or “knock out” searches are poor quality searches you can do yourself, and most importantly—they will not reveal conflicts with your trademark. That is because the DuPont Test I mentioned above does not look at direct conflicts, but whether a trademark is sufficiently similar to another trademark. I do not offer poor-quality direct-hit searches, I only offer high-quality, comprehensive trademark clearance searches.
A Direct Hit Search Can Result in a False Negative
Interestingly, a comprehensive search can prevent a false negative. If you conducted only a direct hit search for trademark “AUDIO BSS USA,” you would not find a live, direct hit. However, this search would not reveal, “BOSS AUDIO SYSTEMS,” a trademark that already has a registration.
This was an actual case where the USPTO did determine that AUDIO BSS USA is too similar under a Likelihood of Confusion analysis to BOSS AUDIO SYSTEMS, and rejected AUDIO BSS USA. AUDIO BSS USA ended up abandoning their mark after appealing to the Trademark Trial and Appeal Board and losing. Ava Enters. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006).
Imagine if you had been in AUDIO BSS USA’s situation, is the time and money worth it? A trademark clearance search would have raised this potential issue to the client.
Direct Hit Searches Can Result in a False Positive
In addition, a comprehensive trademark search can prevent a false positive.
For example, the direct hit search would tell you that DELTA for airlines and DELTA for faucets means there is a conflict. However, that is not true; here, the Goods and/or Services fall in different classes. As such, DELTA for airlines and DELTA for faucets can co-exist on the USPTO trademark register. On the other hand, my comprehensive trademark clearance search would have led to the opposite (and correct) conclusion.
Trademark Clearance Searches Provide Confidence
Nearly every word in the English language has some trademark registration. A trademark clearance search will give you confidence to proceed with your application. The purpose of a search is to establish that you can proceed with a trademark application at the USPTO.