Before adopting a trademark, businesses and brands need to determine whether the mark is available for use and is protectable. That is where trademark clearance searches come into play. Clients often overlook the necessity of these searches and use marks in association with certain goods or services without conducting a proper clearance search beforehand. It puts businesses at risk of infringing upon another’s rights and could lead to potential litigation.
Trademark searches allow businesses to determine whether certain marks are already in use. If prior marks exist, clients save themselves the time, effort and expense of investing in marketing initiatives, rebranding, and any future disputes or unnecessary costs. These searches also allow companies to determine the strength or weakness of their mark.
The benefits of conducting a proper clearance search certainly outweigh any costs of potential liability if it is determined that the proposed mark is identical or confusingly similar to a registered mark or one already in use.
What is a Trademark Clearance Search?
A trademark clearance search assesses whether a proposed mark is identical or confusingly similar to a registered, pending or common law trademark. It is a search typically conducted prior to securing federal trademark protection. It searches for marks that are similar in appearance, sound or idea suggested, as well as the goods or services provided. It includes searches for word marks, logos, slogans or composite marks (the combination of a word and design mark). Additionally, the search may be limited to specific countries or geographic regions or is worldwide.
Common Law vs. Registered Trademarks
In general, trademarks distinguish the goods and services of one’s business from those of its competitors. Differences exist between the protection and enforcement afforded to registered as opposed to common law marks.
Common law marks are unregistered marks currently in use and hold seniority to later identical or confusingly similar marks. These marks are afforded certain rights and may pose obstacles to the use and registration of proposed marks. The existence of such rights also exposes businesses to claims of passing off based on the goodwill or reputation attached to the unregistered mark. Owners of these marks use the ™ symbol or its French equivalent "MC" (marque de commerce) to attribute prior evidence of use of the mark.
Registered marks are federally registered marks with the Canadian Intellectual Property Office (“CIPO”) or another country’s trademark database, and afforded more protection as well as the exclusive right to the use of the mark as governed by the Trademarks Act in Canada. These marks are afforded national protection rather than are limited to a specific region or territory where the mark is currently used. Owners of registered marks can pursue actions based on infringement. Registered marks are attributed with the ® symbol or its French equivalent, "MD" (marque déposée).
Although important to search for registered trademarks, it is also equally important to ensure that no prior conflicting common law marks exist since they are afforded certain rights based on prior use.
What is the Difference Between “Knock Out” & Comprehensive Clearance Searches?
A “knock out” search is considered a preliminary search of identical or confusingly similar marks when searching a country’s trademark database, such as CIPO or conducting a general Internet search. This search is not comprehensive and does not provide a full overview of marks in prior use. Despite these searches being more cost-efficient compared to comprehensive searches, they are afforded less weight, especially for marks later disputed by trademark owners in court.
Comprehensive clearance searches include full searches of identical or confusingly marks, as well as those with slight variations based on phonetic and foreign language equivalents, alternate spellings, and those with similar ideas suggested. Depending on the client’s eventual use and territory of the mark, these searches could include several countries or may be limited to just one. If a company operates in more than one country and is seeking trademark protection, it should conduct comprehensive clearance searches in those territories in which the mark is used in association with specified goods and services. These searches will typically uncover a wide range of prior use, including prior pending and registered marks, common law results, domain, trade and business names, as well as social media sites. It also provides dictionary definitions for marks deemed descriptive or generic based on their industry. Despite the costs involved in conducting these searches, they provide relief to businesses in the early stages of the development or marketing of a business name or product, rather than consequences of rebranding, redesign or potential lawsuit.
Why Conduct a Trademark Clearance Search Before Adopting a Mark?
The simple answer is a trademark clearance search provides assurances that your proposed mark does not conflict with a registered mark or one in prior use. For instance, start-ups may come up with a proposed name for a new product, and luxury brands may come up with a new collection name. Proper clearance searches provide businesses with the ability to determine if other similar marks already exist in connection with specified goods and services. Without these searches, clients run the risk of potential opposition proceedings and claims of infringement or passing off. These searches also allow companies to assess the strength of their mark. If a mark is strong, it will likely be a coined or fanciful term. Weaker marks describe the goods and services, or are generic and used time and time again by many parties further diluting the strength of a mark.
Can Trademark Clearance Searches Become Stale?
Yes, eventually over time. Another party can file for a similar trademark at any time, and the country’s trademark database may not be up-to-date. For instance, if a company decides to file for a trademark application with CIPO three months after conducting a clearance search, the search may become stale and may not uncover recently filed marks that were in prior use or discovered on the search report. That is why companies should conduct searches relatively close in time before filing their trademark application.
Should I Conduct a Trademark Clearance Search if I Already Secured a Domain Name?
Yes. Companies should still conduct trademark clearance searches even though they have secured a domain name. These searches should be completed well before launching any websites, products or services. Securing a domain name does not afford a company trademark rights. Typically, companies want their business name or trademark to be consistent with their domain name. Therefore, clearance searches should still be conducted since companies could be liable if the use of a domain name conflicts and infringes upon a third party’s rights. In the event of a domain dispute, a company may be required to transfer the domain registration to the senior trademark rights holder.
If the Proposed Mark is Already in Use, What are my Options?
After conducting a trademark clearance search and discovering another identical or similar mark exists, businesses have several options.
If it is discovered that your proposed mark is identical or confusingly similar to an already registered trademark, you will have difficulty securing trademark protection over your proposed mark. To prevail, the owner of the proposed mark must prove prior use over the registered mark.
On the other hand, a mark may be registered but the owner has abandoned or failed to use it for several years. In these instances, businesses may be able to successfully cancel the registered mark based on abandonment or failure to use the mark properly in association with certain goods and services. These cancellation or expungement proceedings are very costly and require sufficient evidence.
If a proposed mark is identical or confusingly similar to an unregistered mark, a company may be entitled to registration but this assessment is based on several factors, including the length of use, extent of use, industry, and goods or services offered.
Ranieri Law counsels clients in securing trademark protection by conducting proper clearance searches to determine whether a proposed mark is available for use and is protectable. Our firm provides both “knock out,” as well as comprehensive clearance searches depending on each client’s need. Our searches include a comprehensive report, as well as an in-depth review and opinion based on the search results. Businesses and brands should conduct these searches early on before investing in any marketing initiatives or resources put towards particular products or services. The potential legal risks are avoided and cost savings are realized once proper clearance searches are conducted. For more information on trademark clearance searches, Ranieri Law provides complimentary initial consultations.
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