After identifying a potential mark (as discussed in Part 1 of this series) one must determine if the mark is available for use in commerce. At a minimum, this involves examining existing federal and/or state rights that other parties might have in potentially conflicting marks. During this “clearance” process, the reviewer should research a variety of sources to determine if another party is using an identical or confusingly similar mark to identify the same or related goods or services. One of the most prevalent and costly pitfalls in trademark selection and registration is the adoption and use of a mark in commerce without first clearing the mark. Some individuals and businesses consciously choose to forego clearance (often because of short-sighted time and cost considerations), while others simply are unfamiliar with the process and its importance.
The primary clearance objectives are (1) to determine the existence of other registered marks that are identical or confusingly similar to the proposed mark, which likely would bar the registration of the proposed mark, and (2) assuming no such registered marks exist, to identify other potential registration objections that the United States Patent and Trademark Office (the “USPTO”) or third parties might raise during the application process.
A proper clearance involves two separate steps: (1) the preliminary or “knockout” search and (2) the full clearance search. The knockout search should identify marks that would present obvious conflicts, before investing time and money in a full clearance. For instance, if one desires to use the mark COCA-COLA to identify a new beverage, a knockout search would quickly (and economically) reveal numerous existing marks containing the COCA-COLA literal element (including the COCA-COLA® word mark registration), which would bar the registration of the proposed mark.
If a mark clears the preliminary search stage, the reviewer should undertake a more comprehensive full clearance search, incorporating search criteria for identical marks, marks with spelling variations, phonetic equivalents, and other similar marks appearing in USPTO and state records, published directories and reports, domain name registrations, and on the Internet. Most trademark practitioners conduct the knockout search in-house and obtain full clearance reports from established vendors specializing in comprehensive trademark searches, such as Thomson CompuMark. A trademark lawyer will work with his or her client to tailor the clearance strategy to match the applicable goods or services and relevant market. This is particularly important in the modern business world, in which the Internet permits even the smallest of companies to conduct business in the international marketplace.
Certainly, one never likes to discover potentially conflicting marks -- particularly during the more expensive full search. However, the existence of a seemingly conflicting mark does not always mean a proposed mark is unavailable. Indeed, in some cases, a closer examination of the registration or application documents might reveal that what first appeared to be a conflict is a non-issue. For example, the overall commercial impression of the marks, coupled with distinctions in the applicable goods or services, might create the necessary level of distinction to permit use and registration.
In other instances, the owner of a previously registered mark might no longer be using the mark. Similarly, a clearance report could identify a mark as being the subject of a pending application, while a closer examination of the USPTO record might reveal that the owner actually abandoned the application. Even in instances in which there is a bona fide conflicting mark, the respective mark owners might be able to resolve the conflict by entering into one or more appropriate agreements, for example co-existence agreements for certain territories and/or certain goods or services, licenses, or purchase agreements. However, it is only with knowledge of potentially conflicting marks that one can fully evaluate his or her position and explore these or other options.
Unfortunately, even the most robust, well-developed clearance strategy cannot absolutely guarantee the absence of any conflicting marks. But a well-developed search strategy increases the chances of identifying potential conflicts before investing significant time and money in applying for registration, which is the topic of the next installment of this series.
L. Kevin Levine is the founder of L. Kevin Levine, PLLC (go figure), a boutique entertainment, copyright, trademark, and business law firm in Nashville, Tennessee. A lifelong musician who grew up in his family's music store, it was inevitable that Kevin would build his legal career in entertainment and business.