Trademark Clearance Search
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.
Our Trademark Service offers a complimentary clearance check by our trademark experts before we file your application.
How to Conduct a Trademark Clearance Search
Clearance searches can be overwhelming. Even so, you can break them down into four (or five) steps: choosing a trademark, describing your trademark, searching the USPTO’s resources, going through additional online search engines, and, optionally, hiring a professional.
Remember that conducting a thorough and encompassing clearance search is not an easy task. We’ve done our best to provide the information you need to get started, but searching for marks like yours is not always as easy as it seems like it should be. When in doubt, we’re here to help.
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 pending trademarks, registered trademarks, formerly registered marks, and applications that never made it to registration. Searching TESS is non-exhaustive, as it does not include 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. (This occurs when similar or identical marks promote related goods/services.)
Both word marks and design marks can be searched in TESS. While word marks can be found by using keywords, design marks are identified by specific design codes. These can be found in the USPTO’s design code manual.
Importantly, it is not always easy to use TESS to its fullest extent or to glean meaningful results from your research. It often takes a practiced eye to understand when goods/services and their respective marks are similar enough to cause problems.
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!
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*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.
