Conducting a Trademark Clearance Search

Note: Links to our free templates are at the bottom of this long guide.
Also note: This is not legal advice

Introduction

Conducting a trademark clearance search is an essential step for any business looking to protect their intellectual property rights in today’s ever-evolving and competitive landscape. Here at Genie AI, our team of experts provide free templates to help businesses complete a thorough search - allowing them to identify potential conflicts and ensure their proposed trademarks are eligible for registration.

The process of conducting a trademark clearance search involves searching through both existing trademarks and pending applications. This allows businesses to make sure they are not infringing on someone else’s rights and that they are not using an existing trademark. The outcome of the search also provides insight into how consumers may interpret the proposed mark, as well as how it will be evaluated by the US Patent & Trademark Office (USPTO).

In addition to protecting intellectual property rights, completing effective searches can also help companies avoid costly litigation further down the road. If conflicts or similar marks are identified early on, businesses can take steps to modify their proposed trademarks in order to minimize any risks associated with infringement or copied ideas.

To summarize then, conducting a thorough trademark clearance search is key for any business wishing to protect its intellectual property rights from third parties or from legal disputes that may arise from infringement. Read on below for our step-by-step guidance and information on how you can access our template library today – no Genie AI account required!

Definitions

Contents

1. Establishing the Scope of Your Search
2. Identifying Your Business and Your Trademark
3. Identifying Your Target Market
4. Developing a List of Potential Conflicts
5. Performing a Comprehensive Search of Existing Trademarks
6. Reviewing Other Businesses in Your Industry
7. Conducting a Comprehensive Search
8. Searching Online Resources
9. Consulting a Professional
10. Analyzing the Results
11. Comparing Your Trademark to Existing Trademarks
12. Assessing Your Risk
13. Taking Appropriate Action
14. Deciding Whether to Move Forward
15. Considering the Benefits of Trademark Registration
16. Seeking Legal Advice if Necessary
17. Keeping Track of Your Trademark
18. Establishing a System for Tracking Your Trademark
19. Monitoring Your Trademark for Potential Infringement
20. Understanding the Difference Between Federal and State Trademark Protection
21. Exploring the Benefits of Federal Protection
22. Understanding the Limitations of State Protection
23. Understanding the Risks of Trademark Infringement
24. Assessing Your Risk
25. Taking Preventative Measures to Reduce Your Risk
26. Drafting and Filing Your Trademark Application
27. Preparing Your Application for Filing
28. Submitting Your Application to the USPTO
29. Monitoring and Enforcing Your Trademark Rights
30. Monitoring the Use of Your Trademark
31. Taking Legal Action When Necessary
32. Renewing Your Trademark When Necessary

Get started

Establishing the Scope of Your Search

• Determine the exact mark you are looking to clear: This includes the exact wording, font, and design elements of the mark.
• Understand the goods and services you plan to use the mark with: You should be as specific as possible when listing the goods and services.
• Research the USPTO’s database: The USPTO’s Trademark Electronic Search System (TESS) will allow you to search registered trademarks.
• Utilize a trademark clearance search service: You can use a service such as CompuMark to search both registered trademarks and common law trademarks.
• Research relevant social media: Searching social media platforms such as Twitter or Instagram can help you identify any potential conflicts.

You can check this step off your list and move on to the next step once you have a clear understanding of the exact mark you are looking to clear and the goods and services you plan to use the mark with.

Identifying Your Business and Your Trademark

• Determine the exact name of your business and the trademark that you will be registering
• Establish the scope of the trademark search by getting specific about the type of mark, the goods and services, and the geographical area for which you will be registering the trademark
• Research your business name, as well as any potential variations of the name that you may want to register in the future
• Make sure that all elements of your trademark are clearly defined so that you can conduct a thorough search
• When you have determined the exact name of your business and the trademark that you will be registering, you can check this off your list and move on to the next step.

Identifying Your Target Market

• Identify your target market or markets, based on the type of business and trademark you want to register.
• Consider the geographic area of your target market, as well as the language spoken in that geographic area.
• Brainstorm a list of possible words, phrases, and slogans related to your business and trademark.
• Research the target market to determine if the words, phrases, and slogans you brainstormed are already being used in the marketplace.
• When you have created a comprehensive list of words, phrases, and slogans related to your business and trademark, and have researched the target market to ensure that none of them are already in use, you can check this step off your list and move on to the next step of developing a list of potential conflicts.

Developing a List of Potential Conflicts

• Brainstorm potential conflicts - consider words, sounds, shapes, logos, and other potential conflicts for your trademark
• Search for similar trademarks in your target market by using online resources such as the United States Patent and Trademark Office (USPTO)
• Evaluate trademarks that are similar to yours in terms of spelling, sound, appearance, or meaning
• Make sure to include registered, unregistered, and expired trademarks in your search
• Make note of any similar trademarks that you come across during your search

When you have finished this step, you should have a comprehensive list of potential conflicts in your target market. You can then move on to the next step of performing a comprehensive search of existing trademarks.

Performing a Comprehensive Search of Existing Trademarks

• Use a comprehensive search tool, such as the United States Patent and Trademark Office (USPTO) database, to check if any existing trademarks conflict with yours.
• Enter the potential trademark name into the search tool.
• Review the results and make a list of potential conflicts.
• You can check this step off your list and move on to the next step when you are satisfied with the results of the search and have identified any potential conflicts.

Reviewing Other Businesses in Your Industry

• Search for competitors and businesses in your industry that use similar marks.
• Look for marks that are similar to the one you want to use.
• Make sure that your mark is significantly different from existing marks.
• Consider obtaining legal advice if you feel that your mark is too similar to an existing mark.

Once you have completed your review of other businesses in your industry, you can check it off your list and move on to the next step in the trademark clearance search process.

Conducting a Comprehensive Search

• Contact a trademark attorney to conduct a comprehensive search.
• Provide your trademark attorney with a list of the marks and classes of goods and services that you plan to use.
• Ask your trademark attorney to search the federal trademark registry, state trademark registry, common law, and other relevant sources.
• Ask your trademark attorney to provide an opinion as to whether your proposed trademark conflicts with another existing mark.
• Once the search is completed and the opinion provided, you will know if you can move forward with registering your trademark and using it in commerce.

Searching Online Resources

• Look up the trademark in the USPTO database.
• Research the name in the USPTO’s trademark electronic search system (TESS) to determine if there are any similar trademarks already registered.
• Check the Trademark Status and Document Retrieval (TSDR) to see if any applications for the trademark have been filed.
• Perform a thorough search of other online resources such as domain registries and Google.
• Check to see if the trademark is being used anywhere on the internet.

You can check this step off your list and move onto the next step when you have thoroughly searched the USPTO database, other online resources, and haven’t found any similar trademarks registered or used.

Consulting a Professional

• Contact an experienced trademark attorney or trademark search firm to perform a comprehensive trademark clearance search
• Provide the attorney or firm with information regarding the proposed trademark, including any potential logos, images, words, phrases, and descriptions that you plan to use
• Explain the type of trademark products or services you plan to offer
• Receive a comprehensive report of the findings, including any conflicts or risks that may arise with the proposed trademark
• When the attorney or firm has completed the search and provided a report, you can then move on to the next step in the trademark clearance process.

Analyzing the Results

• Review the results of your trademark clearance search, including all relevant trademarks, to determine if there is a likelihood of confusion with your trademark
• Look for registered marks that are similar to your proposed mark, including marks with identical names, similar phonetic spellings, similar stylizations, and similar logos
• Compare the goods and services of the other trademarks to your proposed trademark
• Check the register of trademarks to see if the other trademarks are still in use
• If any of the other trademarks are still in use, consider the distinctiveness of the proposed mark
• Consider the distinctiveness of the proposed mark in the context of the other trademarks
• Make a determination about whether there is a likelihood of confusion with the other trademarks
• If there is a likelihood of confusion, you will need to choose a different trademark
• Once you have analyzed the results, you can check this off your list and move on to the next step.

Comparing Your Trademark to Existing Trademarks

• Compare your trademark to existing trademarks by searching the USPTO’s records for similar marks
• Examine the similarity between your trademark and existing trademarks in terms of sight, sound, and meaning
• Consider if your trademark is so similar to an existing trademark that it could be confused with it
• If you find an existing trademark that is too similar to yours, determine if the goods or services it covers are different from yours
• When you find no similar marks that could create confusion, you can move on to the next step: Assessing Your Risk

Assessing Your Risk

• Review any potential similarities between your trademark and existing trademarks
• Assess the risk of conflicting with existing trademarks and how it may affect your business
• Ask yourself if there is a likelihood of confusion between your trademark and existing trademarks
• Consider the distinctiveness of your mark and its ability to be protected
• Determine if there are any causes of action that may be pursued against you if you use the mark
• Review the potential costs of defending your mark if challenged

When you can check this off your list:

• When you have an understanding of the risk of conflicting with existing trademarks and the potential costs associated with defending your mark if challenged.

Taking Appropriate Action

• Seek the advice of an attorney if the results of your search raise any red flags.
• Consider filing for a trademark registration to protect your mark and prevent infringement.
• If the results of your search are favorable, you can start using and promoting your trademark.
• Monitor the mark for any sign of infringement or unauthorized use.
• Keep records of your trademark use and any infringement incidents.

You can check this step off your list when you have all the necessary information from a trademark attorney and have decided on the best course of action for your trademark.

Deciding Whether to Move Forward

• Analyze the results of the trademark search to determine if you should move forward with the trademark registration process.
• Consider the potential for confusion with existing marks, the strength of the mark, and the impact of the registration on your business.
• Make an informed decision on whether to move forward with the trademark registration process.
• When you have made a decision, you can check this off your list and move on to the next step in the trademark clearance search.

Considering the Benefits of Trademark Registration

• Research the benefits of trademark registration, such as:
• You will be able to use the ® symbol to indicate that you own the trademark
• Legal protection of your mark against infringement by competitors
• A higher level of brand recognition
• Consider the potential costs associated with registering a trademark
• Determine if the potential benefits outweigh the potential costs
• When you have a good understanding of the potential benefits and costs associated with trademark registration, you can move on to the next step.

Seeking Legal Advice if Necessary

• Consult a legal professional to discuss the trademark search and what it entails.
• Speak with a lawyer or trademark attorney to ensure your search is complete and to get advice on how to interpret the results.
• Ask questions about the benefits and limitations of registering the trademark, and make sure you understand the costs associated with protecting your mark.
• Consider speaking with a lawyer to discuss any other legal issues related to your mark such as related to copyright or patent law.
• When you have received advice from a legal professional, you can check this off your list and move on to the next step.

Keeping Track of Your Trademark

• Record the date of your first use of the trademark in the marketplace
• Monitor the use of the trademark in the marketplace on an ongoing basis
• Track any changes to the trademark or its use in the marketplace
• Monitor the filing of any applications for trademarks that are similar to or the same as your trademark
• Keep track of any communications or agreements related to the use of your trademark
• Record the date of any renewal of your trademark
• When you have completed the above steps, you will have an organized system to keep track of your trademark. This will enable you to quickly and easily reference any information related to your trademark and to respond to any potential trademark infringement issues.

Establishing a System for Tracking Your Trademark

• Set up a spreadsheet to track all important information related to your trademark, including the trademark application number, filing date, registration date, etc.
• Use the spreadsheet to track your trademark’s use and to note any potential issues or infringements.
• Utilize a document management system to store all your trademark related documents and records.
• Set up an alert system to keep track of any potential infringements or new applications filed with the USPTO.

You’ll know when you can check this off your list and move on to the next step when you have established a system to track your trademark, including setting up a spreadsheet, utilizing a document management system, and setting up an alert system.

Monitoring Your Trademark for Potential Infringement

• Monitor your trademarks regularly on the USPTO website to identify any potential trademark infringement
• Search the USPTO database for any similar marks that have been registered or applied for
• Monitor the web, including social media, for any unauthorized use of your mark
• Set up Google Alerts for your trademark
• Set up trademark watch services to alert you of any applications for similar or identical marks
• When you find any potential infringement, investigate further to determine if a legal action is warranted

You will know when you can check this off your list and move on to the next step when you have completed all of the above steps and you have conducted a thorough review of the USPTO database and the web to identify any potential trademark infringement.

Understanding the Difference Between Federal and State Trademark Protection

• Familiarize yourself with the basics of trademark protection, including the differences between state and federal registration.
• Understand the benefits of federal registration, such as the right to use the ® symbol and the ability to protect your trademark in other states.
• Research the different filing requirements for federal and state registration, including the cost of registration and the length of time it takes to process.
• Research which classes of goods and services are eligible for federal and state trademark protection.
• Once you have a thorough understanding of the differences between federal and state trademark protection, and have familiarized yourself with the filing requirements and eligibility criteria, you can check this step off your list and move on to exploring the benefits of federal protection.

Exploring the Benefits of Federal Protection

• Learn the advantages of registering your trademark with the United States Patent and Trademark Office (USPTO).
• Understand why registering your trademark federally provides the strongest legal protection for your mark.
• Explore the federal registration process, including the associated fees and filing requirements.
• Consider the benefits of federal registration such as exclusive nationwide rights to use the trademark, the ability to prevent importation of infringing goods, and the ability to collect damages from infringers.

When you can check this off your list:

• Once you have a comprehensive understanding of the federal registration process, the associated benefits, and the filing requirements, you can move on to the next step.

Understanding the Limitations of State Protection

• Understand the limitations of state protection when it comes to trademarks.
• Research state trademark laws and regulations to determine what level of protection is offered.
• Find out if registering your trademark at the state level is sufficient or if you need to consider federal trademark protection.
• Be aware of any restrictions or requirements that must be met in order to obtain state protection.
• When you have all of the necessary information, you can make an informed decision about whether to pursue state trademark protection or not.
• When you have determined whether state protection is necessary, you can check this off your list and move on to the next step.

Understanding the Risks of Trademark Infringement

• Become familiar with the trademarks held by competitors, as well as those held by other businesses in the same field
• Look for trademarks that are identical or similar to yours, which could lead to potential infringement
• Understand the risks of trademark infringement, which can include legal action taken by the trademark holder
• Check if your trademark is registered in the USPTO database
• Check if your trademark is registered in the applicable state trademark registry
• When you are confident that you have a comprehensive understanding of the risks of trademark infringement, you can move on to the next step.

Assessing Your Risk

• Review the list of goods and services that you plan to use your trademark with
• Research the trademark database to determine if your mark is available for use
• Look for any identical or similar trademarks that may be used with the same or similar goods and services
• If you find trademarks that are similar to yours, assess the likelihood of confusion to determine if you can proceed with your mark
• When you have successfully completed your research, you can move on to the next step of taking preventative measures to reduce your risk.

Taking Preventative Measures to Reduce Your Risk

• Begin researching the availability of the trademark you are considering by conducting a trademark clearance search.
• You can search for identical and/or confusingly similar trademarks on the USPTO website, or use an online trademark search tool.
• Consider searching the internet and other sources to make sure your desired trademark is not in use.
• Also, consider searching the USPTO records to make sure the trademark you are considering is not already registered to another party.
• When you have completed the search and are satisfied that the trademark is available, you can then move onto the next step of drafting and filing your trademark application.

Drafting and Filing Your Trademark Application

• Draft your trademark application and include the information you’ve collected so far.
• Choose the class of goods or services to apply for the mark, and decide the type of trademark application you need to file.
• Check that the mark is not already registered or pending registration in the U.S.
• You can also search the USPTO’s Trademark Electronic Search System (TESS) to see if the mark is already registered or pending.
• Submit your trademark application to the USPTO with the required filing fee.
• You will receive a filing receipt from the USPTO.

You can check this step off your list when you have gathered all the necessary information, drafted your application, chosen the class of goods and services, and submitted the application with the required filing fee.

Preparing Your Application for Filing

• Research the USPTO’s trademark database to determine if your trademark is available for registration.
• Ensure your trademark is properly classified under the USPTO’s trademark classification system.
• Gather all necessary materials and documents needed to file your trademark application.
• Create an account with the USPTO for filing purposes.
• Prepare your trademark application, making sure that all information is accurate and up-to-date.
• Once you have prepared your trademark application and gathered the necessary materials, you can move on to the next step of submitting your application to the USPTO.

Submitting Your Application to the USPTO

• File your application online via the USPTO’s Trademark Electronic Application System (TEAS)
• Fill out the application form completely and accurately
• Assemble all of the necessary supporting documents
• Pay the filing fee
• You will receive a confirmation email from the USPTO once the application has been filed and the fee has been processed
• You can check this step off your list and move on to monitoring and enforcing your trademark rights when you have received the confirmation email from the USPTO.

Monitoring and Enforcing Your Trademark Rights

• Review the USPTO database periodically to look for any potential infringements.
• Keep an eye out for any unauthorized use of your trademark on the internet or in the marketplace.
• Take prompt action against any infringers. This might involve writing a cease and desist letter, filing a complaint in federal court, or contacting an attorney.
• Monitor your trademark to ensure that it is being used correctly and consistently.
• Know when and how to renew your trademark.

You can check this off your list when you have completed the steps above and have a strategy in place to monitor and enforce your trademark rights.

Monitoring the Use of Your Trademark

• Monitor the use of your trademark by searching for it in public databases and online directories
• Look for similar trademarks that could be confused with yours
• Monitor online marketplaces for any unauthorized use of your trademark
• Keep an eye out for ads, blogs, and other online sources that could be using your trademark
• Be aware of both domestic and international uses of your trademark
• Check for any unauthorized use of your trademark on social media

You can check this step off your list once you have conducted the trademark clearance search and are aware of any potential trademark infringements.

Taking Legal Action When Necessary

• Identify the type of trademark infringement in order to determine the appropriate legal action
• Contact the infringing party to demand they cease and desist their unauthorized use of your trademark
• Issue a cease and desist letter and/or a notice of infringement
• File a lawsuit if necessary to protect your trademark rights
• When the infringing party has complied with the cease and desist letter and/or notice of infringement, you can check this off your list and move on to the next step.

Renewing Your Trademark When Necessary

• Monitor the progress of your trademark registration to make sure it is renewed on time
• Keep track of when your trademark must be renewed and plan to send in the necessary paperwork at least 6 months before the deadline
• Make sure to submit the correct paperwork with the correct information in order to successfully renew your trademark
• Once the paperwork is submitted and accepted, you can check off this step and move on to taking legal action if necessary

FAQ

Q: How do you go about conducting a trademark clearance search?

Asked by Bethany on 15th March 2022.
A: Conducting a trademark clearance search is a crucial step for any business looking to protect its intellectual property rights. It involves researching existing trademarks or applications that may conflict with your proposed brand name, logo or slogan. You should consult a professional to ensure that your trademark does not infringe on any existing IP rights. A trademark attorney can provide advice on the scope of the search, the types of records to be searched and the period of time to be covered. They can also advise you on the steps to take if an infringement is identified, such as filing objections or taking other legal action.

Q: Are there any differences between conducting a trademark clearance search in the US, UK and EU?

Asked by Jason on 30th April 2022.
A: Yes, there are differences between conducting a trademark clearance search in the US, UK and EU. Firstly, it’s important to note that the US and EU have different laws governing trademarks and IP rights. In the US, trademarks are registered with the United States Patent and Trademark Office (USPTO). In Europe, trademarks are registered with the Office for Harmonization in the Internal Market (OHIM). In the UK, trademarks are registered with the Intellectual Property Office (IPO). Additionally, each jurisdiction has its own rules for searching for existing trademarks and providing protection for them. For example, in Europe it’s important to consider whether an identical or similar mark is being used in another member state before registering a mark. As such, it’s important to consult a professional when conducting a trademark clearance search in any of these jurisdictions.

Q: Is conducting a trademark clearance search necessary for all businesses?

Asked by George on 1st June 2022.
A: It depends on your business model and sector. Generally speaking, if you plan to use a brand name or logo that could be confused with an existing one then it’s essential that you conduct a trademark clearance search. This is especially important if you plan to operate in multiple countries as different jurisdictions have different laws governing trademarks and IP rights. For example, if you are setting up a business that operates across multiple countries then it’s important to check that your brand name or logo isn’t already being used elsewhere as this could lead to costly legal action from existing IP owners. Similarly, if you plan to use a brand name or logo that is similar to an existing one then it’s important to make sure that there isn’t any chance of confusion. However, if you plan to use a unique brand name or logo then it may not be necessary to conduct a trademark clearance search as there is unlikely to be any confusion with an existing mark.

Q: How much does it cost to conduct a trademark clearance search?

Asked by Kayla on 15th July 2022.
A: The cost of conducting a trademark clearance search varies depending on the scope of the search and the complexity of the research required. Generally speaking, basic searches can cost anywhere from $200 – $500 while more comprehensive searches can cost upwards of $1,000 or more depending on how many jurisdictions need to be searched and how far back into records needs to be searched for potential infringements. Additionally, there may also be additional costs for filing applications with various IP offices around the world or for taking legal action against potential infringers. Therefore it’s important to consult with a professional who can provide advice on how best to approach your trademark clearance search and provide an accurate estimate of costs associated with doing so.

Q: What types of records should I look at when conducting a trademark clearance search?

Asked by Ryan on 30th August 2022.
A: When conducting a trademark clearance search it’s important to look at several different types of records including national registers which contain information about registered trademarks as well as pending applications; common law sources such as newspapers and magazines; internet sources such as websites and social media accounts; databases containing information about unregistered trademarks; foreign language sources such as dictionaries and encyclopaedias; trade publications; trade fairs; industry directories; trade shows; industry events; government gazettes; court records; patent office records; scientific journals; company websites; press releases; business directories etc. Additionally, it’s also important to consider whether an identical or similar mark is being used in another jurisdiction before registering your mark so it may be necessary to consult with professionals outside of your own country who are familiar with local laws regarding IP rights in other countries.

Q: What steps do I need to take if I find an infringement during my trademark clearance search?

Asked by Sarah on 15th October 2022.
A: If you find an infringement during your trademark clearance search then it’s important that you take swift action in order to protect your intellectual property rights. Depending on the situation, this could include filing objections against pending applications or taking legal action against existing marks which are infringing upon yours. If an infringement is identified then it’s essential that you seek legal advice from experienced professionals who can help guide you through the process and provide advice on the best course of action based on your particular circumstances. Additionally, if you have already registered your mark then it may be possible to take action against infringing marks by submitting complaints directly with relevant IP offices around the world or through international dispute resolution mechanisms such as WIPO’s Uniform Domain Name Dispute Resolution Policy (UDRP).

Q: When should I consider engaging an attorney for help with my trademark clearance search?

Asked by Aiden on 31st December 2022.
A: It can be beneficial for businesses of all sizes – from startups to established companies –to engage an attorney when conducting a trademark clearance search as they can provide invaluable advice regarding what records should be examined during the search process as well as guidance on how best approach any infringements that might be identified during the process. An experienced attorney will also be able to advise you on filing objections against pending applications or taking legal action against infringing marks should this become necessary during your search process or afterwards should any infringements arise after registration has taken place. Additionally, they will also be able to advise you on protecting your mark beyond just registration (such as tradmark monitoring) so that you can ensure that your intellectual property rights remain secure in future years too.

Example dispute

Trademark Infringement Suit

• Plaintiff may raise a lawsuit against a company if they believe the company has infringed on their trademark.
• A trademark clearance search may be used to determine if the trademark is already registered by another entity.
• The plaintiff may be able to win the case if they can prove that the defendant has used the trademark without permission and in such a way that it has caused the plaintiff financial loss or damage to their reputation.
• The plaintiff may be able to obtain damages or an injunction to prevent the defendant from using the trademark.
• Settlement of the case may be possible if the defendant agrees to cease using the trademark, pay the plaintiff for damages, or even pay for legal fees.
• Damages may be calculated based on the amount of money the plaintiff lost due to the infringement, or based on the profits the defendant gained from using the trademark.

Templates available (free to use)

Trademark Search Registration Questionnaire

‍