There are two very important (read: equally as important) steps in the trademark process. The first step is the trademark clearance, and second is the trademark registration. Usually, when peeps DIY their trademark registrations, they skip the first part. That’s why we are going to discuss it here.
What is a trademark clearance?
A trademark clearance is a full review of common law (unregistered) trademarks, pending and abandoned trademark applications, and existing and expired trademarks to determine if there are any potential roadblocks to successfully registering your trademark with the United States Patent and Trademark Office (USPTO).
The trademark clearance involves more than doing a public search on the USPTO TESS website or googling.
Let me explain why…
The trademark clearance involves those things, but so much more.
The initial search.
Trademark infringement does not just involve copying someone’s trademark word for word. For this reason, when a professional trademark clearance is done (also called a trademark search) the attorney or research firm uses search queries that include different phonetic variations and translations. As a side note, trademark clearances are done for brand names, slogans AND logos.
Attorney review for potential infringement issues.
The attorney reviews the search report which reflects everything that comes up during the clearance process and analyzes the results to determine if there is a potential of trademark infringement with another brand. The attorney will analyze this important question: Is there a likelihood of confusion with these other brands?
Attorney analysis of the strength of your proposed trademark.
Next, the attorney analyzes your proposed name to determine the strength of its use as a trademark. Strong trademarks are fanciful (meaning that they are completely made up names) or arbitrary (meaning that a common name is used in an uncommon way). Suggestive trademarks, suggest to the public what service you offer or product you sell but leave a bit of mystery. Descriptive trademarks are a no-no. The attorney will analyze what category your mark falls into to determine whether it’s a strong candidate for registration.
The attorney opinion letter.
An opinion letter is worth its weight in gold – it’s the attorney’s professional opinion on the strength of your proposed trademark based on their analysis of the search report, and any additional review. It lets you know whether it’s wise to move forward with registration. Also, it documents that you’ve done your due diligence in hiring professionals to conduct a formal clearance for you.
Most immediately, this process helps you know whether you can proceed with a successful trademark registration or not. If your brand needs to be reworked, you should know before registration or you’ll have the insight of what challenges may arise and how to deal with them.
In the long term, having this work done also helps if you’re seeking investors.
They’ll want to invest in well-vetted brands, rather than business opportunities, where the brand name or logo may either at risk or open a floodgate of legal issues. Likewise, if you want to sell down the road, it provides assurance to your buyer that you’ve done due diligence to legally own the brand.
If there’s any part of your business that’s important for you to work with an attorney on, it is this trademark work. There’s more to it than meets the eye. Don’t short cut it peeps.
Yes, I do trademark clearance reviews as a part of my Trademark and Brand Protection service. Contact me here if you’d like to discuss services.