A trademark clearance search is generally a search of registries, markets, and other avenues of commerce to see if your prospective trademark may be “confusingly similar” to the prior mark. The analysis of what is confusingly similar depends on more than just the mark itself. On the federal level, it is generally determined by the DuPont factors, of which there are 12. By far, the two most important of these to consider are the appearance or presentation of the mark itself, and the goods or services with which it is used.
Just because a mark is identical to another mark does not necessarily mean they are confusingly similar, so long as the respective goods or services that the marks are being used on are sufficiently different from or unrelated to one another. For example, if a company wants to be named Apple Restaurant or Apple Catering, consumers who are looking for Apple Computers are not going to see Apple Restaurant and believe that it’s coming from the same source.
An individual can certainly perform their own trademark search by searching the public registers at the United States Patent and Trademark Office, or by using internet search engines to see if any products are being sold under the same or a similar mark. However, these searches tend to not be as thorough as a trademark search that is performed by a trademark attorney. When conducting trademark searches, attorneys understand that potentially conflicting marks may or may not be an issue depending on more than just the marks themselves. In fact there are 12 DuPont factors that each play a part in determining the likelihood of confusion between two marks. In addition to their deeper understanding of what may or may not be a conflicting mark based, attorneys utilize software tools to conduct these searches, which make them significantly more efficient and comprehensive. Attorney searches may also be more thorough because they can search international registers and common law usage in addition to the US registers if desired.
What Happens After We Register Our Trademark?
Once a trademark has been registered, there are periodic actions that need to be taken to prevent the registration from going abandoned.
Between the fifth and sixth year of registration, the owner of the trademark will have to make a sworn statement that says they are still using the mark in commerce and the payment of an associated fee. The reason this is done between the fifth and sixth year is because most new products fail within three to five years if they are going to fail, and this allows for relatively rapid removal of such failed brands from the US register. While generally use is a required to maintain a trademark registration, there are certain things that can be excusable for non-use, but they are relatively few and far between.
Between every ninth and tenth year of registration, the trademark owner will have to file for a renewal of the registration, which requires a similar statement indicating that the owners are still using the mark in association with the goods that are cited in the registration and the payment of a fee. Renewal of the registration will last for another 10 years.
Unlike copyrights or patents, properly maintained trademarks can exist perpetually. Copyrights and patents each inherently have a time at which they will lapse and the patent or copyright will fall into the public domain. Once this happens, anyone can freely reproduce the copyrighted work or practice the previously patented invention.
Once a trademark has been registered, is a best practice to monitor or police that registration. There are third parties that provide these services. When registering a mark, there is a mandatory one-month publication period prior to allowance or granting of that registration, and a good brand manager will monitor that publication and make sure that the trademark office is not allowing any marks that are going to conflict with the registered mark.
Additionally, if a company’s brand expands beyond the scope of the goods and/or services listed in the registration that they already have, then they may consider filing subsequent applications for trademark registration to cover those expanded services or goods that are outside the scope of the prior registration.