The Importance of Trademark Clearance Searches for Businesses
Any business owner looking to distinguish himself from others in the market would be wise to safeguard the elements that make his business unique. The same can be possible through trademarking any word, symbol, design, or phrase that the company uses to identify itself in the marketplace. However, the owners must conduct diligent research before settling on the identifying material for their company. Part of this research includes performing a Trademark Clearance Search.
A trademark clearance search is vital because it allows you to get ahead of obstacles and avoid potential legal issues before they arise and before the company invests time and resources in developing its trademark. It helps to identify any legal barriers to the company’s use or registration of its trademark (which can be the company business name, brand name, slogan, or logo) before the company begins to use the trademark or apply to have it registered.
Elements of Trademark Clearance
Before adopting a mark, you should determine whether the proposed mark is available and protectable. Searching for existing trademarks allows you to avoid the costly consequences of an infringement lawsuit, product redesign, and rebranding.
There is a wide range of places to search when it comes to trademark clearance. The USPTO, WIPO, EUIPO, etc., are examples of searchable databases that allow users to search for trademarked words, brands, and even images. Parties can also additionally check domain names, newspaper listings, internet searches, and phone book listings.
While searching, it is essential to keep in mind that merely searching for a single word or image is not going to be enough. You should also not forget to search for similar marks and marks with slightly different spellings. Therefore, consider and include all the variations of your name or image in the search.
Types of Trademark Searches
- Clearance Search – It is a comprehensive search conducted for marks that are not only identical but also might be considered deceptively similar to the mark in question. This type of search, as the name suggests, is to ensure that there is absolute ‘clearance’ before the said trademark could be applied. Such a search would be made using several keywords, combinations, including aurally similar ones to alleviate the possibility of deceptively similar marks. A search would also usually be conducted online, including domain names to determine if there are any marks deceptively similar to the subject mark being used.
- Knockout Search – It is a type of search conducted to knock out the marks, which are identical or pose an imminent threat to the mark to be applied owing to its very close resemblance. It is like a search where the purpose is to find out if there is any apparent and most likely hassle to the mark to be applied.
- INN Search – INN stands for International Non-Proprietary Names. These are the names that cannot be appropriated or owned by any person. INNs are common terms used concerning a drug or pharmaceutical substance that is commonly used in the medical field. Hence the INNs are not allowed to be owned or applied for by any specific entity, and no term deceptively similar to the INN can be owned by any entity either; for instance, paracetamol.
- Domain Name Search – A domain name is the face of every business and getting a .com extension of your brand is crucial. It depends on a variety of factors as to how the trademark is to be used. The non-availability of a domain name of the trademark selected is a vital factor to be considered while clearing the trademark for registration.
Post Clearance Search
Once you have conducted a thorough trademark clearance search, you can address the following questions.
- Is the trademark active, or has it been abandoned?
- What is the likelihood of confusion between your mark and something similar?
- Are the businesses similar?
- Where do you do business?
These questions can allow you to make informed decisions on whether to proceed or make changes. Largely, this stage can be divided into three broad parts, which are as follows:
- Analyzing Availability – After reviewing a trademark clearance search, the availability of your mark should be analyzed for its use and registration. Analyzing a trademark clearance search involves spotting the potential conflicts your application and use of your trademark could encounter. The strongest potential conflicts occur between similar marks that are used in commerce on the same or similar goods. The same can lead to refusal of registration on the grounds of the likelihood of confusion. The risks of refusal and infringement need to be assessed.
- Assessing Protectability – If similar marks are registered successfully, it may be the case that your trademark has a high chance of success as well. It could also suggest that your trademark is weak because of the popularity of similar trademarks. The results need to be reviewed by looking for disclaimers of descriptive elements of registered marks and forming an opinion as to how your application could be impacted.
- Analyzing Potential Conflicts – If potential conflicts are spotted in the trademark clearance search, it needs to be checked whether the prior user of the potentially conflicting trademark has grounds to object to the registration of your trademark. If yes, then the risk needs to be assessed. The search can also help identify earlier users of an identical or similar trademark.
Failure to conduct a comprehensive trademark search can become challenging for businesses that end up facing Trademark Infringement. Even if the alleged violation is unintentional, a business can face lawsuits and cease and desist orders. A trademark clearance search may significantly reduce the possibility of the company receiving a demand or legal action from an earlier rights holder claiming infringement of his trademark by identifying such risks upfront in terms of any pre-existing identical or confusingly similar trademarks. In cases where a conflicting trademark is discovered, and the owner of the conflicting trademark asserts his rights, the brand would likely need to rebrand the company and/or products or services to resolve the conflict and avoid legal action. Rather than going through this trouble at a later stage, it is easier to be prepared through a trademark clearance search beforehand. ✅ For more visit: https://www.kashishipr.com/