In the dynamic world of business, trademarks stand as pillars of brand identity and legal protection. Yet, amidst their importance, misconceptions often shroud the process of trademark registration. This article delves into the common misunderstandings surrounding trademark registration, unraveling the truth behind the complexities to highlight the path towards securing your company’s brand and safeguarding its future.

Are Trademark Clearance Searches Required?

Unequivocally, yes. Trademark clearance searches are needed before submitting an application to the U.S. Patent and Trademark Office (USPTO). In fact, trademark clearance searches are needed before even starting a business to prevent infringement on exisiting brands, but many entrepreneurs don’t educate themselves about the risks associated with trademark infringement before beginning their businesses.

One of the most important parts of the trademark registration is the clearance search. The purpose of a trademark clearance search is to identify any existing trademarks that may prevent registration of a proposed trademark or that may constitute trademark infringement if used.

The USPTO is Only One of Many Places to Search for Conflicting Trademarks

There are two common misconceptions among entrepreneurs regarding trademark clearance searches. The first misconception is that searching the U.S. Patent and Trademark Office (USPTO) is the only place they need to look for potentially conflicting trademarks. The second misconception is that only trademarks using the same words or same logo are an issue. Additionally, word trademarks are usually registered separately from design marks, or logos, which is why clearance searches for word marks are conducted separately from clearance searches for design marks.

The Difference Between Common Law Trademark Rights and the Benefits of Federal Registration

Unlike most countries, trademark rights in the United States are based on use, not registration. The United States has developed a registration system through the USPTO, but common law trademark rights established before a registered trademark cannot be invalidated by a USPTO registration certificate. This means that the USPTO is only one of many places clearance searches need to be conducted. Because trademark rights are based on use, common law trademarks must also be searched.

Trademark attorneys utilize a combination of manual and automated clearance searches through tools such as Corsearch, CompuMark, or Haloo to identify problematic common law or registered trademarks and determine whether a proposed trademark is fit for registration. These searches will examine different databases such as USPTO Principal Register and Supplemental Register entries, state business registrations, Securities and Exchange Commission (SEC) filings, and other directories. 

However, it’s also important not to forget about domain names and social media handles. These can also be indicative of whether a proposed trademark or something confusingly similar is already in use by another party for a particular classification of goods or services.

The Test for Trademark Infringment Focuses on Consumer Confusion and Similar (But Not Identical) Trademarks Can  Be Infringing

When it comes to searching for conflicting trademarks, many business owners only look for exact matches to their proposed trademark. However, using this method can result in missing problematic existing trademarks because trademark infringement is based on the likelihood of consumer confusion. This legal analysis compares two potentially conflicting trademarks using the thirteen DuPont factors to determine whether there is a likelihood of consumer confusion, and ultimately, trademark infringement. If consumer confusion is likely, the proposed trademark will be denied for registration. 

Due to how trademark infringement is evaluated, clearance searches need to be conducted not only for exact matches to the proposed trademark, but also for confusingly similar trademarks. This requires some creative thinking on the part of trademark attorneys and the clearance search analysis is more beneficial if the trademark attorney is familiar with the ways the proposed trademark will be used in their clients’ short-term and long-term plans. 

This approach can prevent an entrepreneur from registering a trademark that is hindered from growth due to preexisting trademarks in a classification of goods or services that the entrepreneur wants to expand to in the future.

Conclusion

Trademark law is more complicated than most people realize, but to ensure a company’s continued growth and sustainability, creating an intellectual property strategy with an attorney is highly recommended.