For businesses and individuals alike, maintaining a brand is important especially if you have goods or services to sell. Filing a trademark is the best way to make sure that your brand remains under your control. But before you can register your mark with the United States Patent and Trademark Office (USPTO), it’s important to make sure that it is unique to avoid any issues down the line. That’s where a trademark clearance search comes in.
What Are the Types of Trademark?
There are three main types of trademark: words, designs, and combinations of words and designs. The USPTO also manages service marks (used to identify a service) and certification marks.
Word marks include only the word or phrase itself, without any accompanying style choices like color or font. Although many companies have a logo, many others simply use a name. Registering a word mark allows them to protect their brand without the need to develop a logo, which is a costly process on its own.
Design marks are the logos you think of when you hear the name of a particular brand. These marks contain only a graphical design and are not accompanied by any text. The Apple logo, the Nike “swoosh,” and the McDonalds “M” are all popular examples of a design mark.
Composite marks are marks that contain both a word and some kind of graphical element in their design. Some well-known examples include the Starbucks logo (the mermaid design with “Starbucks Coffee” around the outer ring) or the Samsung logo (the oval design with a stylized “Samsung” in the middle).
You may also have heard of certification marks. Unlike trademarks, a certification mark does not indicate the source of a good or service. Instead, a certification mark indicates the product’s adherence to some level of accepted standards with respect to that product. The seal indicating that a food is “USDA Organic” is an example of a certification mark.
What Is a Trademark Clearance Search?
Before preparing and submitting a trademark registration, trademark attorneys will always conduct trademark clearance searches. These searches can identify existing trademarks that are confusingly similar to yours.
Trademark protection in the United States is based on the mark’s use in commerce, and a major feature of trademarks is their indication that a particular good or service originated with the expected source. In other words, a trademark signifies the quality of and reputation surrounding a particular good or service. If your mark is likely to cause confusion as to the source of goods or services because of its similarity to an existing registration, then the USPTO will deny your application.
A trademark clearance search allows a trademark attorney to assess whether there will be issues with your registration. Registering a trademark can be expensive, and trademark clearance searches help you avoid the trouble of going through the entire registration process only to discover that your mark cannot be registered.
What Does a Trademark Clearance Search Include?
Some trademark attorneys use clearance services to conduct the search for them. Others will perform the search themselves. In either case, the attorney interprets the results and provides you with advice regarding your prospective trademark.
There are four main sources consulted in a search: federal, international, and state databases and the common law.
Federal Trademark Clearance Searches
A trademark clearance search starts with the USPTO database. There, the trademark attorney will conduct a number of searches to find existing registrations and active applications. For example, if your trademark is a logo of an elephant, the attorney will search the database for other design and composite marks containing an elephant. If you are trying to register a word mark, then the attorney will search for different spellings as well. Because trademark protection applies both to the word mark itself and the way the word is pronounced, a mark that sounds similar to another may cause confusion even if the words are spelled differently.
International Trademark Clearance Searches
Next, the trademark attorney will conduct a search of international trademarks. Under international treaties, the United States honors trademark registrations in other countries. If your mark is too similar to a foreign trademark, there may be infringement even if the foreign mark was not registered with the USPTO.
State Trademark Clearance Searches
State trademark protection is very limited compared to federal registration with the USPTO. Nevertheless, many businesses register their trademark with the Secretary of State in the state where they operate. The most important difference is that state trademark rights apply only to the area where the products are actually sold. In contrast, a trademark registered with the USPTO receives nationwide protection.
Common Law Trademark Clearance Searches
Finally, a thorough trademark clearance search involves searching the internet, business registries, newspapers, trade publications, and more to identify any other use of similar marks. Even if a mark is not eligible for federal registration, a business may still choose to use it. In that case, they will build common law rights in that trademark over time.
The USPTO does not require an independent trademark clearance search prior to submitting an application. In fact, a USPTO examiner will conduct a search of their own for all applications. Nevertheless, a trademark clearance search is still a good idea because the examiner’s search will be less thorough than one provided by a dedicated trademark attorney. It can also help you discover prior trademarks so you don’t waste money on an application that is sure to be denied.
Can You Use Dead Trademarks?
A dead trademark is one for which the filer failed to respond to an office action. This can happen if the filer abandons the application and does not respond to any notices issued by the trademark examiner. A mark is also abandoned if the owner of the trademark fails to file a statement of use after the registration is granted. In both of these cases, the trademark is dead.
Because the registration for a dead trademark is no longer active, you are technically free to attempt to register it yourself. However, the fact that a trademark is dead does not mean that the mark is not in use. The owner of the dead registration may still be using the mark, building up common law trademark rights.
If the trademark is dead and a common law search does not identify that it is still being used, then you are free to register it yourself. If you choose to do so, a trademark attorney can find out why the original trademark was abandoned in the first place during the initial trademark search.
Do U.S. Trademarks Expire?
Unlike patents and copyrights, trademarks do not have a specific expiration date. Instead, trademark law protects registered trademarks indefinitely as long as they are continuously used in commerce. However, the greater scope of protection does come with greater responsibilities. Your trademark could lose its status in a number of ways.
One way to lose protection is to abandon your trademark. After the USPTO grants your registration, you must file a statement of use between five and six years after registration and then at ten year intervals. Failure to file any Statement of Use indicating your continued use of the mark can result in abandonment of your mark.
Failure to Maintain Quality Control
Another way a trademark can “expire” is through naked licensing. Many trademark owners wish to license their trademark to others to expand the reach of the owner’s brand. However, doing so requires the owner to exercise a certain degree of control over the person using the license. Trademark owners risk losing their trademark rights if they fail to maintain quality control over their licensees.
Essentially, a trademark owner must manage their trademark both during and beyond registration. Unlike copyrights, where the protection persists passively, trademark registration requires a more active, hands-on approach. Stopping infringement and continuing to use your mark in commerce are crucial to maintaining strong trademark protections.
Need to Consult a Trademark Lawyer?
John C. Laurence Law, PLLC, prides itself in offering comprehensive intellectual property legal services to our clients. Whether you need a clearance search or a full trademark registration, John has the expertise to help you. Contact our office today or give us a call at 917-612-1059 to schedule a free consultation.