There are two very important (read: equally as important) steps in the trademark process. The first step is the trademark clearance, and second is the trademark registration. Usually, when peeps are trying to DIY their trademark registrations, they skip the first part. And, that’s why we are going to discuss it here.
What is a trademark clearance?
A trademark clearance is a full review of common law (unregistered) trademarks, pending and abandoned trademark applications, and existing and expired trademarks to determine if there are any potential roadblocks to successfully registering your trademark with the United States Patent and Trademark Office (USPTO).
The trademark clearance involves more than doing a public search on the USPTO TESS website or googling.
Let me explain why…
The trademark clearance involves those things, but so much more.
The initial search. Remember, I explained how trademark infringement does not just involve copying someone’s trademark word for word? (If you missed that post check it out here). When you have a professional trademark clearance done (also called a trademark search) the attorney or research firm is using search queries that include different phonetic variations and translations. Trademark clearances are done for brand names, slogans AND logos.
An attorney reviews the search report for potential trademark infringement. An attorney reviews the search report which reflects everything that comes up during the clearance process and analyzes the results to determine if there is a potential of trademark infringement with another brand. The attorney will analyze this important question: Is there a likelihood of confusion with these other brands?
An attorney analyzes your proposed name. Next, an attorney analyzes your proposed name to determine the strength of its use as a trademark. Remember, I explained, that strong trademarks are fanciful or arbitrary? Suggestive trademarks, suggest to the public what service you offer or product you sell. Descriptive trademarks are a no-no. The attorney will analyze what category your mark falls into to determine whether it’s a strong candidate for registration.
An attorney drafts an opinion letter. An opinion letter is worth its weight in gold – it’s the attorneys professional opinion on the strength of your proposed trademark based on the their analysis of the search report, and any additional review. It lets you know whether it’s wise to move forward with registration. Also, it’s documents that’s you’ve done your due diligence in hiring professionals to conduct a formal clearance for you.
Most immediately, this process is going to help you know whether you can proceed with a successful trademark registration or not. If your brand needs to be reworked, you should know before registration or you’ll have insight of what challenges may arise and how to deal with them.
In the long term, having this done is going to really help you if you’re seeking investors.
They’ll want to invest in well-vetted brands, rather than going into business opportunities where even the brand name or logo may be at stake. Likewise, if you want to sell down the road, it provides assurance to your buyer that you’ve done due diligence to legally own the brand.
If there’s any part of your business that’s important for you to work with an attorney on, it is this trademark work. I wanted to share the process so you understand that there’s more to it than meets the eye. Don’t short cut it peeps.
And yes, I do trademark clearance reviews as a part of my Trademark and Brand Protection service. Contact me here if you’d like to discuss services.