by Traverse Legal, reviewed by Enrico Schaefer - December 5, 2011 - f. Trademark Availability & Monitoring
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm that helps clients secure trademark registrations in the United States and throughout the world. Today, I will be answering the question: Do I need a trademark availability assessment or clearance prior to trademark registration?
The short answer to this question is yes. While it is not absolutely required, it is something that I always recommend to clients. And there are really two reasons why anybody looking to protect their trademark via a trademark registration should start with an availability assessment, also sometimes called a trademark clearance.
The first is because you do not want to apply for a trademark registration only to find out that you’re infringing someone else’s trademark. Trademark infringement is a very serious cause of action that comes with steep damage penalties and high money damages amounts. Instead of filing for an application with the USPTO only to receive a cease and desist saying that your application confirms that you are using, or intend to use, a mark that creates a likelihood of confusion with an existing trademark owner’s mark, it is important to identify that information upfront via a trademark availability assessment or clearance. By doing so, you will see not only what other marks are out there that have been registered or used, but also determine what tweaks you may be able to make to your mark in order to continue to use it as you intended prior to performing the availability assessment. Once again, it does not make sense and is not worthwhile for you to jump right to a USPTO application only to find out that that has now subjected you to claims of trademark infringement.
The other reason that it is important to have a trademark availability assessment is because it gives you the opportunity to learn before filing for that trademark registration, whether or not you are likely to be successful with your application. A licensed and experienced trademark attorney can perform that trademark availability assessment and identify what other trademark applications or registrations exist within the USPTO that may preclude you from successfully registering your mark. Just like the examining attorney at the USPTO will refuse your application based upon a likelihood of confusion under Section 2(d) if it determines that there’s other marks out there that would interfere or create confusion with your mark, an experienced and licensed trademark attorney performing a clearance can provide that information before you pay the money for a trademark application, which, as most of us have learned, is nonrefundable.
It is also beneficial for a trademark attorney to look at your intended trademark and give you a better sense as to where your trademark rights may be. In particular, how strong of a mark do you have? Is it a descriptive mark that would only be entitled to trademark registration because you’ve been using it for five years, or because you can establish that it is, indeed, something that has acquired distinctiveness, or is it an arbitrary or fanciful mark that is likely to be registered because of its strength? Either way, these are questions that you should have answered prior to proceeding with a trademark application. Not only will it save you money, but it will also save you time and the effort in the future of having to rebrand if, in fact, your trademark application does not procure into registration.
So, when you’re asking yourself the question, or you’re looking for a trademark attorney and ask them the question, whether or not a trademark availability assessment or clearance is necessary prior to filing for your trademark registration, listen to this show and realize that I’m a trademark attorney that’s recommending that it is absolutely necessary, not only for the bottom line of your company and your brand, but also in the short term to make sure that you’re not subjecting yourself to claims of trademark infringement.
This has been Brian Hall answering your question: Do I need a trademark availability assessment prior to trademark registration?
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
