Maintaining a brand is essential for businesses and individuals alike, 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 essential to make sure that it is unique to avoid any issues down the line. That’s where a trademark clearance search comes in.
- What Is a Trademark Clearance Search?
- What Does a Trademark Clearance Search Include?
- Can You Use Dead Trademarks?
- Do U.S. Trademarks Expire?
- Need to Consult a Trademark Lawyer?
Before preparing and submitting a trademark application, trademark attorneys will often conduct a trademark clearance search. These searches can identify existing trademarks that may be confusingly similar to yours.
Trademark protection for a mark is relative to the goods and services provided under that mark. Accordingly, determining whether allowing registration of your mark will cause a likelihood of confusion with an existing registration or trademark application is also relative to the goods and services described as being offered under your mark. If it is determined that a likelihood of confusion exists, registration will be denied by the USPTO.
A trademark clearance search allows a trademark attorney to assess whether there may be a likelihood of confusion issue with your trademark application. 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.
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 primary sources consulted in a search: federal, international, and state databases and the common law.
A trademark clearance search starts with the USPTO database. There, the trademark attorney will conduct several searches to find existing registrations and active applications. For example, if your trademark is an elephant logo, 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 that are phonetically similar. 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.
If you are interested in registering your trademark in territories outside the U.S., the trademark attorney may also conduct a search for international trademark registrations and applications. Under international treaties, you may file a trademark application in foreign countries based on your U.S. trademark application. Conversely, you may file a trademark application in the U.S. based on a trademark application in a participating foreign country.
State trademark protection is 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 crucial difference is that state trademark rights are limited to that State. In contrast, a trademark registered with the USPTO receives nationwide protection.
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. If these common law rights are developed before the filing date of your trademark application, you will most likely not be able to stop the current use of this mark.
The USPTO does not require an independent trademark clearance search before submitting a trademark application. However, an examiner attorney at the USPTO will conduct a search for the mark in your trademark application with reference to the described goods and services in that application. A trademark clearance search can prepare you for the trademark registrations and pending trademark applications that may be cited against your mark.
A dead trademark is one in which the owner has failed to respond to an office action. This can happen if the owner does not respond to an issued office action or any other notice issued by a trademark examiner. A mark may also be abandoned when the trademark owner fails to file a statement of use after registration of the mark 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 upon his 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.
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.
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 continued use of your mark in commerce are crucial to maintaining strong trademark protections.
TCP Law, PLLC, prides itself in offering comprehensive intellectual property legal services to our clients. Whether you need a clearance search or the filing of a trademark application, John has the expertise to help you. Contact our office today or give us a call at (347) 943-1449 to schedule a free consultation.
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