Trademark Clearance Search
When You Want More
You conduct a trademark clearance search when looking for trademarks similar to your own to confirm your mark is unique enough to be registered. This search helps ensure you aren’t infringing, can speed up the registration process, and provides peace of mind prior to spending money on the mark. A trademark clearance search can be completed by an individual, a business, or a trademark attorney.
In this article, we'll cover:
What Is a Trademark Clearance Search?
A trademark clearance search is the process of researching to see if there is another in-use trademark that is similar to your own. The search includes all your efforts to confirm your mark’s availability, such as looking through trademark resources provided by the United States Patent and Trademark Office (USPTO). Other efforts include scouring the internet, social media, and state business registries and trademark databases.
The point of the clearance search is to confirm that your mark is unique enough within your industry to identify your products in the market. If another mark looks or sounds like yours, is used for a related good or service, and is currently live, this would mean your mark is not unique enough. Continuing to use it anyway could lead to trademark infringement, and if the other mark is federally registered, you would likely be denied registration.
Why should you conduct a trademark clearance search?
Conducting a trademark clearance search is important to protect your time, effort, and money, regardless of if you choose to register your mark or not.
If you are not registering your trademark, a clearance search is important because you need to make sure your trademark isn’t infringing on another mark. Common law trademarks have rights and protections in their geographical area. But prior to use, owners of common law marks need to make sure they’re not misusing other unregistered marks, as well as marks registered in their state, federal trademarks, and famous marks. For example, a local software company can’t be called Google, even if they are only operating in their region.
If you are registering your trademark with the USPTO or your state, conducting a trademark clearance search can help speed up the process. Once you submit your trademark application, the relevant authorities (the Secretary of State’s office or relevant business department and the USPTO) will check your mark against all registered and pending marks in that jurisdiction. By doing this search yourself prior to submission, you have a better chance of not receiving a trademark office action from the USPTO or refusal on the grounds that your trademark is confusingly similar to another.
How to Conduct a Trademark Clearance Search
Yes, clearance searches are important. Yes, you want to do one. Yes, you know how… wait, you don’t? No worries. Clearance searches seem really overwhelming, but really you can break it down into four (or five) simple steps: choosing a trademark, describing your trademark, searching the USPTO’s resources, going through additional online search engines, and, optionally, hiring a professional.
Keep reading for step-by-step instructions for how to conduct a trademark clearance search.
Choosing a trademark is the first step of conducting a clearance search. If you’ve already begun using your mark in commerce, this is an easy step. If you’re still at the drawing board, it might be more difficult. You need to know exactly what your mark will look/sound like before you start your search.
Pro-tip: Consider choosing two or three variations of your mark so if halfway through your search you realize your top choice won’t work, you already have the next one lined up.
Beyond just having the mark’s image or words chosen, go ahead and describe your mark like you would on an application. (Do this even if you’re not planning on registering your trademark.)
This includes choosing your trademark classes, accurately describing your goods and services, and thinking through any related goods and services.
Pro-tip: If you’re just getting started, think big. For example, even if you’re a coffee shop, account for any merchandise you might want to sell. You might not end up registering with these classes/descriptions, but it’s usually better to have done the research earlier than to wish you had later.
The USPTO offers two great resources for trademark clearance searches:
TESS is the USPTO’s (public facing) database of registered trademarks, formerly registered marks, and applications that never made it to registration. Searching TESS is non-exhaustive, as it does not include applications that are currently pending, or state-registered and common law trademarks, but it is a great first step in making sure your USPTO application isn’t rejected because of likelihood of confusion.
Search TESS not only for the trademark you most want to use, but for variations of it. Change up the spelling, the punctuation, or the word order to make sure that your mark won’t be denied for being too close to another.
The Gazette is a journal that is updated every Tuesday with the new trademarks approved by the USPTO. The Gazette publishes each approved trademark for two reasons: to give applicants the chance to confirm their trademark’s accuracy and to give others the chance to oppose trademarks they think are too similar to another.
The Gazette is helpful in clearance searches as it shows you which marks will soon be registered. Each mark has 30 days in the Gazette, giving you plenty of time to peruse for a clearance search.
Pro-tip: This is also a great time to look for your second, third, and fourth choice trademarks in case later in the process you have to abandon your first choice.
Other trademark clearance search resources include state trademark registration databases, social media, and good old internet search engines. These are helpful because not every trademark is registered with the USPTO. Additionally, you can run a business name search, since not all businesses trademark their names. This is especially important if you are trying to register a smaller phrase, or even just one word.
Going through state databases, social media, and internet searches gives you a greater look at the trademark landscape. This could include common law trademarks, or even marks that are being used in commerce right now as their USPTO applications are pending.
Searching through the vast abyss that is the internet might seem overwhelming. In the end, it’s up to you how much effort you put into this search. One thing to consider is which sounds worse to you (and your investors): an exhausting but exhaustive search right now, or having to scramble to re-brand if you’re sued for infringement?
Pro-tip: You can set up a Google alert for your trademark. This is helpful in trademark monitoring once your mark is in use, but can also catch similar marks being used across the internet during your clearance search.
Infringement sounds easier, you might declare. I don’t want to be prepared. If that sounds like you, but you know that it’s a bad idea, consider this snazzy second option: hire someone else to do your trademark clearance search for you!
This gives you the best of both worlds. Not having to hunt through the USPTO’s database and not having to just cross your fingers and hope for the best.
Our Trademark Service offers a complimentary clearance check by our trademark experts before we file your application.
Real World Example
You’ve got the steps, you’ve got the tools, you’ve got the caffeine—you’re all ready to start your trademark clearance search. If you’re still a little concerned about how to get started, keep reading: we’ll illustrate the process using one of our own trademarks: We’re Just Not Annoying®.
Since this trademark is already registered, the results will likely be more streamlined than when you do a clearance search for a yet-to-be registered mark. However, the steps are the same. Let’s see how it shakes out:
We’re Just Not Annoying® is a standard character trademark (and one of Northwest’s promises to clients.)
This mark is categorized under Trademark Class 35: Advertising and Business. The product description is: “Commercial registered agent services.” This information helps us narrow down the classes and related products that could present a likelihood of confusion alongside a similar trademark.
First, let’s check TESS.
- Adjust the default settings:
We’ll choose “plural and singular,” “live and dead,” and “All” from FIELD, and “Exact Search Phrase” from RESULTS.
- Then, search for the term we want to trademark:
We’re Just Not Annoying. This sends us to the results, where there are 38 possible connections.
For example, one possible connection is the live trademark “We’re Just Tasting.” The phrase is probably far enough away from ours to be problem-free, but let’s click on the mark and view the records to see what it promotes: entertainment services such as TV and radio programs, online newsletters, and blogs about food tasting. Since that has nothing to do with registered agent services, we’re all good.
Analyzing each mark that TESS pulls up can take a while, but is a crucial part of your trademark clearance search.
Second, let’s check the Gazette.
- Type out your trademark’s keywords in the search bar.
- Select the journal issues to be searched.
- Tab all three reasons for publication (opposition, registrations, and registration canceled).
When we choose issues from December 2022-January 2023 and search the keyword “annoying,” one mark comes up. This mark is a company name that, when translated, is the English word “annoyed” and belongs to a tomato salsa company. It has no likelihood of confusion with our mark.
Since Northwest is located in Washington State, we can take a look at the WA Secretary of State Filing System. Searching both the full text and our shorter leads, there are no Washington-specific trademarks that pop up. So, we’d be all good for a state or common law trademark stationed in Washington, and no Washington marks would impede our federal trademark’s use in the state.
When using internet search engines to look up our mark, it’s mostly our own site and other sites mentioning Northwest that pop up. If we scroll back far enough, we see things like how-to articles about running businesses without annoying your customers. These irrelevant search results make it a safe bet that no one else is using this exact phrase.
Filing your trademark through Northwest gives you access to our trademark experts, who review each application, conduct a clearance search of their own, and respond to procedural office actions for you.
