What Are My Options After a Failed Trademark Clearance Search?

failed trademark clearance search

A professionally conducted trademark clearance search is a necessity before filing any US trademark registration.

It is necessary, that is, if you don’t want to spend a year or more of your time and hundreds, if not thousands, of dollars in wasted US Patent and Trademark Office (USPTO) filing fees and other costs.

A full trademark clearance search, conducted by an experienced Michigan trademark attorney, will ensure the guaranteed success of your registration application but that you will have the information necessary to decide whether you want to bother filing that application at all.

It is, in fact, the purpose of a trademark clearance search is to locate the problems with your business name, product name, slogan, or logo from a trademark registrability standpoint. If there are problems, you want to know about them before investing in that brand.

Right?

It’s great when a trademark clearance search fully “clears” your trademark for launch into the USPTO registration process. But what if it doesn’t?

This Article will briefly discuss the purpose and advantages of a proper trademark clearance, as well as the methods employed for these searches by trademark lawyers in Metro Detroit elsewhere.

Finally, the Article will also discuss your general options for moving forward or re-thinking your branding when your lawyer sends you an Opinion letter forecasting a dim prospect of final trademark registration.

Why Hire a Lawyer to Conduct Your Trademark Clearance Search?

Let’s be clear on what exactly a proper pre-filing trademark clearance search is not. It is not a Google search. It is not a one-off, quickie “knockout” search of TESS, the USPTO’s trademark register database.

A professional trademark clearance search is a much more involved and time-intensive process than the “It all looks OK to me on Google” search often performed by potential trademark registrants prior to contacting a Michigan trademark attorney.

You want to hire a trademark lawyer to conduct your trademark clearance search rather than doing it yourself because you want, in the end, an experienced review of the results of the search that bears in mind the legal requirements for trademark registration under the US Trademark Act (“the Lanham Act”) and prevailing case-law.

With few exceptions, non-lawyers performing Google searches—even when stumbling across a search result that appears problematic—will not be aware of the requirements of the Lanham Act and certainly not of the prevailing case-law emerging from Federal Courts and the Trademark Trial and Appellate Board (TTAB).

A trademark lawyer provides the following advantages when conducting your pre-application trademark clearance search:

  • Expertly able to search the very non-user-friendly TESS USPTO trademark database;
  • Will utilize the services of third-party professional trademark search services to leave no stone unturned;
  • Will search not only the Federal trademark register but the local registers maintained by all 50 states, business entity name registrations in all 50 states, website domain name registrations, social media and internet “hits” for your name, and more.
  • With regard to logos and other designs, will conduct an experience-based search of all of these sources with an understanding of what exactly USPTO Examiners look for when deciding whether a design is confusingly similar to a pre-registered design mark;
  • Reviews all search results with the practiced eye of a professional, experienced trademark attorney.

No one thinks that, because they are a realtor, CPA, mechanical engineer, or retail worker that they possess the knowledge of and can competently practice as a medical doctor.

But people in these and every other profession commonly and routinely believe that they are professionally capable of acting as attorneys and that, whatever it is that licensed attorneys do, they can do it just as well.

This sort of hubris lands people in a lot of hot water.

No one will throw you in jail for filing your own US trademark application. However, there is no reason to think that, if you aren’t an actual trademark lawyer, that you’re going to either do a good job with a pre-filing clearance search—or actually understand whether the search results you’re looking at are problematic for your trademark registration prospects or not.

Do you know what that DuPont standard is? Thought not.

Hire a trademark lawyer to get a genuinely useful opinion as to whether or not your application is a waste of your time and money.

Good Trademark Clearance Searches Sometimes Yield Negative Results

That all said, even a good trademark attorney can’t guarantee good prospects of success for any given proposed trademark.

Some trademarks proposed by clients are plainly, in fact, not likely to yield positive results from a trademark clearance search—but the client insists on proceeding anyway, despite having been warned in advance by his or her Michigan trademark attorney.

An example of this might a not-very-unique-sounding business name utilizing just one or two very common English words. The odds of a million conflicting trademark clearance search results arising increase in converse proportion to the level of imagination that has gone into devising the trademark.

However, sometimes a trademark clearance search yields conflicting results just out of plain bad luck. You came up with the most unique business or product name ever—but, as fate would have it, somebody else came up with it first. And for the same or similar or a related product.

Uncovering this information is what the trademark clearance search is for. If this is the case, you want to know this before you file your trademark registration application.

Once you file a US trademark registration application, you will wait 8 months or more (as of this writing) to get a response from the USPTO Examiner assigned to your file. Should that response eventually come in the form of a refusal due to conflict with a very similar or even exact-match prior registration, that 8 month wait was a massive waste of your time. And money.

Better to find out in advance.

So what if you do? If your trademark clearance search yields unhappy results, what are your options?

Options After Negative Trademark Clearance Search Results

  1. Apply for Registration Anyway

Otherwise known as the “What the heck?” option, you may decide to shoulder the risk and just go for registration of the trademark anyway.

Sometimes, this option is a calculated and bearable risk when the clearance search results returned by your trademark attorney are negative—but not that negative.

“Moderate risk of failure” results described in the Opinion letter you receive from your trademark lawyer often present, for you, the toughest decision to make. The Opinion letter is certainly a form of malpractice protection for your lawyer. It’s a way to say, “You can do this—but you’ve been warned of some risk and we can’t be held responsible for the refusal your trademark registration application may receive.”

It’s always a service to you to show you what that risk is, however. At the end of the day, the choice to proceed with an application or not is the client’s to make.

What if the clearance results demonstrate a very high risk of conflict and rejection?

You have the choice to throw your cards in the air and proceed anyway, at least with, now, an understanding of the probability of failure lying in wait for you.

You can likely also count on your lawyer sent you at least a couple of emails further describing that risk of probable failure, all of which, along with your “I know, I know, I just want to go for it anyway!” replies, will be filed away for “CYA” purposes.

  1. Use the Mark Without Registration

Alternatively, you have the choice of accepting this high risk of registration failure and simply proceeding to use the trademark without registering it.

But is this wise?

It’s true that trademark registration is not required to conduct business in Michigan or elsewhere in the United States. Trademark registration is not a “license” needed to buy and sell products or services.

It is, however, a wise step to take if you are engaged in interstate commerce and want to both immunize your business from allegations of trademark infringement and to prevent others from infringing upon yours.

Simply, if you don’t register your trademark, you don’t have a trademark that you can protect in US Federal Courts. In order to file suit for infringement, you must have registered your own trademark first.

Further, if you use a trademark knowing (now, having had a proper clearance search conducted) that it does conflict with another already registered trademark, you are inviting a cease and desist letter and an infringement lawsuit of your own.

That conflicting mark’s owner is going to get wind of your infringing use eventually. And act.

  1. Re-Brand and Try Again

The only real choice you have when you receive an Opinion Letter from your trademark attorney describing a high probability of failure should you proceed with an application is to re-think that trademark—and re-brand.

No enterprise, large or small, wants to be forced to re-brand. If you have already begun using your trademark in marketing, in product production, in the creation of promotional products, and certainly in the course of trade with customers generally, a forced re-branding is a panic-inducing and costly exercise.

But guess what? That cease and desist letter you receive for infringement is going to force you to re-brand anyway.

Better you do it on your own terms and within your own timeframe, not under a gun.

Re-conceiving your trademark, followed by, yes, another trademark clearance search provides the best chance of successful trademark registration after an unhappy trademark clearance search.

Most trademark attorneys will tell you, flat out, in the Opinion letter that they send you after conducting a trademark clearance search returning poor results that this is your only realistic course of action.

Failed Trademark Clearance Search Options: The Bottom Line

It is far better to find this out and re-brand as necessary before you’ve invested money into your brand, if possible, by considering the retainer of an experienced trademark attorney to run a trademark clearance search a necessary business start-up cost.

Retaining a Michigan trademark attorney to run a thorough, professional trademark clearance search of your business name, product name, logo, and slogan should be the first thing you do when you enter the stream of commerce in the US—not the last.

The cost of finding out only after serious brand investment that your name or logo cannot actually be protected as a brand will endanger the long-term viability of your business.

You put a lot of work into selecting just the right laptop and phone system and furniture for your office. Why wouldn’t you put the same effort into ensuring that your brand can be enforced as a trademark?

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.

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