Can I Trademark That? How to Conduct a Trademark Clearance Search

How to do a trademark clearance search

Suppose you are brainstorming company names or brands for your goods or services and have a list of potential candidates. One way to help narrow this list of proposed marks is to investigate whether the proposed marks are legally protectable through federal registration and available for your use by conducting what’s sometimes called a “knockout search.”

What is a “knockout search”?

A knockout search is a preliminary clearance search intended to eliminate proposed brand candidates that are likely to be refused registration. This is done prior to filing a trademark application in order to determine whether the mark will be successfully registered or whether the USPTO will refuse to register the mark. For example, if someone already is using a similar mark for similar goods or services, your application will likely be refused on the basis of likelihood of confusion with the prior applicant/registrant’s mark. It’s important to conduct such a search so that you don’t waste money filing an application for a mark that will ultimately be refused and so that you can avoid adopting a mark that is similar to one that someone else may already be using for related goods or services. If you forgo a search and start using a mark that is similar to someone else’s you might find yourself facing legal action including cease and desist letters, or even a lawsuit for trademark infringement.

A knockout search is not as thorough as a comprehensive search and is not likely to catch all potential issues with your proposed mark, but it can be very helpful to narrow your list to a few best candidates before contacting a trademark attorney to do a comprehensive search. An experienced trademark attorney can help conduct a comprehensive search and interpret the results, as well as provide an opinion on the likelihood of successful registration. This will help you determine whether you should proceed with filing an application of your proposed mark.

How to conduct a knockout search

Start with a search of the United States trademark database on the USPTO’s website. This will search all existing federal registrations and applications. It does not include state registrations or other unregistered marks, so searching this database is just one component of a good search.

Tip: If your prospective mark is more than one word, it’s a good idea to also search each word independently, and for the same words appearing in a different order. Also try alternative spellings and words that sound similar when spoken.

Next places to look include an internet search, state business filings, state trademark records (Minnesota trademarks are searchable in the same way business names are, but not all states let you search these easily) and social media. See if you can find anyone using your proposed mark. Sometimes there will clearly be another business who beat you to the punch, but sometimes the brand might be close or the goods or services might be close and you’ll want to consult with a trademark attorney to assess your risk. If you go ahead and use a mark that is similar to someone else’s you might find yourself with a cease and desist letter or even a lawsuit for trademark infringement.

Interpreting search results

In a best case scenario, your USPTO search won’t find anything because your candidate mark is unique. Be aware that just because a mark doesn’t return any results on the USPTO database or a registered mark shows as “dead” doesn’t automatically mean that you can register or even use your candidate mark. The Trademark Office has rules that result in some marks not qualifying for registration at all, such as when marks are considered descriptive of the goods or services they apply to. For example, you could not register “Apple” if you sold apples, because that would give you and unfair monopoly of a term that every apple seller needs to describe their goods. Typically you cannot register your last name as a trademark, except under limited circumstances where you can demonstrate acquired distinctiveness (which isn’t possible if you haven’t been using a trademark yet). The Trademark Office can also refuse to register marks it deems offensive, such as marks that include expletives or racial slurs. You might also want to eliminate prospects where the words have potential unintended or multiple meanings, such as slang terms, foreign words or acronyms.

Keep in mind also that not finding a registered mark at the USPTO doesn’t mean that the mark cannot be used. It could be that it couldn’t be registered under USPTO rules, or someone is using it but didn’t register it with the USPTO so you’ll want to check other places before concluding that a candidate mark is available for your use, including search engines, state business records and even social media. If you do find someone using an unregistered mark that is the same or similar to your candidate mark, you may want to avoid using that mark despite that they don’t have a registration. Unregistered marks are referred to as common law marks, and owners of common law marks can sue for trademark infringement.

Sometimes results are close calls, for instance identical word mark but different unrelated goods/services or similar mark and similar goods/services. It might be too close, but this determination is highly context specific. For example, if a company in another state has the same mark but is unlikely either of you will ever do business in the same state, this poses a different risk of potential confusion on the part of customers than if both businesses operate online and do business everywhere. The goal of trademark law is that consumers are not confused between sources of a good/service. It’s best to consult with an attorney to assess the risks if your search discovers close results, as each case will be unique, and some businesses are more aggressive about protecting their marks if someone does get even a bit close. Ideally, you will be able to come up with a great mark that no one else is using and that can be registered with the USPTO.