Learn how law firms run trademark clearance searches.
By Desirée Townsend
When law firms run trademark clearance searches for their clients they are looking at two main components:
USPTO trademark applications and registrations that are similar or "formative" of the main word or words within the trademark. Run your own trademark search today using the same system used by major law firms.
Common law trademarks that are in use in commerce, but not yet registered.
The first step is to look for similar trademarks, not just in spelling, but also in pronunciation (sound), meaning, or translation. Once similar or slightly similar trademarks have been identified, next looking at the classes they are filed in... Are the USPTO classes similar, or if they are in different classes, are the goods potentially overlapping?
One example of overlapping classes is Class 025 for clothing overlapping or containing similar goods to Class 035 for an online retail store selling clothing.
Let's say that we wanted to run a trademark search to see if the trademark for the word "SERENDIPITY" is clear for use in commerce, and also, what the likelihood of getting a registration through would be at the USPTO.
We would analyze the results of two main search categories.
The first step is to look for similar trademarks, not just in spelling, but also in pronunciation (sound), meaning, or translation. One way to start would be to search at the USPTO. However, this search algorithm does not look for spelling variations, translations, etc., that is why it is best to run a comprehensive trademark search.
Let's say I want to see if the trademark for SERENDIPITY for a podcast in Class 041 for educational and entertainment services. I would start by searching the USPTO for SERENDIPITY then removing the "dead" trademarks by unchecking the "Dead" box on the left hand side of the search:
The next step is to focus on the classes of goods or services to be offered under the trademark to see if anything similar or slightly similar is pending or registered at the USPTO. To focus in on a particular class enter the number of the class into the second search field:
From there the review comes down to looking at trademarks that are similar or slightly similar to the name of the trademark, or it's pronunciation, or meaning for the same or slightly similar class of good or services. This review is subjective and comes down to years of experience with trademarks and trademark filings which is why it is very important to have an attorney review any results before moving forward with a trademark.
Here are some of the trademarks filed at the USPTO that could potentially pose a problem to filing a trademark application for SERENDIPITY in Class 041:
From a probability standpoint, the odds of this trademark getting through to registration at the USPTO for SERENDIPITY for podcasting services in Class 041 is low. There is a very high probability of being issued a rejection due to "likelihood of confusion." However, working with an attorney to craft a narrow identification of services, and perhaps fighting any rejection issued by the USPTO is an option.
The next step is to search for trademarks that are in use in commerce, may not have filed a trademark application at the USPTO.
Per the USPTO, you become a trademark owner as soon as you start using your trademark with your goods or services. Read more at the USPTO. Therefore, it is important to look for any other trademarks that might be in use in commerce for similar services. One way of doing this is to simply run a Google search and looking for trademarks in commerce.
This type of search can be performed by running a comprehensive trademark search. A search for a SERENDIPITY podcast immediately returns the another podcast by that name:
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