continued from Basics of Trademark Registration, Part One

3. Trademark Clearance

It is unlawful to begin use of a trademark that another company is already using to identify the same or related goods. Trademark clearance searching is intended to determine whether a trademark is available for use and possible registration. Failure to do proper clearance searching can result in a loss of investment. If use of the mark must be stopped in response to a claim of infringement by the rightful owner of the mark, all efforts to create brand identification will have been wasted.

If you are considering a new trademark, you can begin the clearance process yourself by searching the USPTO’s trademark database and selecting the first option: Search pending and registered trademarks. However, due to the subtleties of the clearance analysis, we advise that a trademark attorney be consulted before a mark is adopted.

The majority of our clients ask us to perform some level of trademark clearance before we submit an application to register a mark. This process is most important if you are about to adopt a new mark and are planning to invest significantly in the brand. Clearance searching is less important if you are seeking to register a mark that you have used for years without challenge. We begin our clearance analysis with a review of the USPTO’s trademark database. After that, there are two forms of more in-depth searching that we do:

  • Preliminary search of relevant Federal trademark applications and registrations and State trademark registrations. This is a good, but not comprehensive, search. We review the results and provide an informal conclusion regarding the availability of your proposed trademark in a letter or email note. We bill our time at our standard hourly rates. The legal fees to review the search and to provide you an informal conclusion are less than the “full search,” described below.
  • Full search. This is a very comprehensive search of Federal, State and Common Law trademarks, and is considered superior to the preliminary search. We review the search results and then provide a formal, written legal opinion.

4. Trademark Application

Applications for a federal trademark registration may be filed on one of two grounds. First, a trademark application based on “actual use” may be filed if the owner of the application is currently using the trademark in commerce Congress can regulate, e.g., interstate commerce. Second, if the trademark is not yet in use, but the owner plans to use it in the future, a trademark application may be filed based on an “intent to use.” In brief, an “intent to use” trademark application enables the owner of the application to reserve a trademark for future use.

Preparation of the application includes working with you to develop the broadest identification of goods and selecting an appropriate specimen. Once the trademark application is filed, we enter your application into our computer tracking system. The system enables us to track key dates, to keep you apprised of the status of the application, and to ensure that examination of application is proceeding smoothly.

5. After the Application is Filed

It usually takes 12 to 18 months for an application to mature into a registration. During this time, there is often correspondence back and forth with the USPTO on minor issues.

If you would like to discuss clearance or registration of your trademarks, please contact Peter Kunin.